Anticipation generally requires one reference disclose all elements of a claim. (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987)).
When Examiners begin a patentability search, they seek references that establish anticipation rejections. However, I imagine references often include more important claim features but fail to disclose a minor claim feature.
To overcome this deficiency, skilled Examiners consider the broadest reasonable interpretation (BRI) of the missing claim feature. Thus, an Examiner’s ability to reject the claim in view of the one reference and BRI suggests the complexity behind the Examiner’s claim construction.
For example, an Examiner might reject the claim based solely on the explicit disclosure of the reference and BRI. Alternatively, the Examiner might broadly interpret the missing claim feature and find that the reference inherently discloses a feature within that broad interpretation. Either case necessitates relatively little claim construction, because the rejection ultimately is backed up by solid evidence.
In another example, the Examiner changes the statutory basis of the rejection to obviousness under 35 USC 103. In so doing, the Examiner might broadly interpret the missing claim feature and take Official Notice of the well-known nature of something falling within the interpretation. Official Notice is taken properly in limited circumstances only. So, the accompanying amount of claim construction should be fairly limited.
In a third example, the Examiner realizes an additional reference should be provided. In this case, the Examiner again must change the statutory basis for rejection to obviousness under 103. It is reasonable to assume that, in many cases, the weaker factual basis for the rejection is accompanied by additional logical reasoning. Often, this reasoning includes a broad interpretation.
Thus, although claim construction is present in anticipation rejections, it likely raises less suspicion because the rejection is supported by a stronger factual basis. In contrast, claim construction often is a major issue in obviousness rejections. Foreign applicants sometimes believe the difference in patent laws is the US view of obviousness. However, based on my limited understanding of foreign obviousness equivalents (e.g., “inventive step”), this view does not seem correct. Rather, in my view, the actual issue is the claim construction underlying the obviousness rejections.