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47 USPQ2d 1516, 1522-23 (Fed. Cir, 1998) (The
court held that the prior art anticipated the claims
even though it taught away from the claimed invention.
''The fact that a modem with a single carrier data
signal is shown to be less than optimal does not vitiate
the fact thatit is disclosed.").
NONPREFElUffiD EMBODIMENTS CONSTI­
TUTE PRIOR ART
Disclosed examples and preferred embodiments do
not constitute a teaching away from a broaderdisclosure
or nonpreferred embodiments. In re Susi, 440
F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or
obvious composition does not become patentable simply
because it has been described as somewhat inferior
to some other product for the same use." In re
Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132
(Fed. Cir. 1994) (The invention was directed to an
epoxy impregnated fiber-reinforced printed circuit
material. The applied, prior art reference taught a
printed circuit material similar to that of the claims
but impregnated with polyester-imide resin instead of
epoxy. The reference, however, disclosed that epoxy
was known for this use, but that epoxy impregnated
circuit boards have "relatively acceptable dimensional
stability" and "some degree of flexibility," but are
inferior to circuit boards impregnated with polyesterimide
resins. The court upheld the rejection concluding
that applicant's argument that the reference
teaches away from using epoxy was insufficient to
overcome the rejection since "Gurley asserted no discovery
beyond what was known in the art." 27 F.3d at
554, 31 USPQ2d at 1132.).
2124 Exception to the Rule Thatthe
Critical Reference Date Must
Precedethe Filing Date
IN SOME CmCUMSTANCES A FACTUAL
REFERENCE NEED NOT ANTEDATE THE
FILING DATE
In certain circumstances, references cited to show a
universal fact need not be available as prior art before
applicant's filing date. In re Wilson, 311 F.2d 266,
135 USPQ 442 (CCPA 1962). Such facts include the
characteristics and properties of a material or a scientific
truism. Some specific examples in which later
publications showing factual evidence can be cited
PATENTABILITY 2124
include situations where the facts shown in the reference
are evidence "that,as of an application's filing
date, undue experimentation would have been
required, In re Corneil, 347 F.2d 563, 568,145 USPQ
702, 705 (CCPA 1965), or that a parameterabsent
from the, claims was or was not critical, In re.Rainer,
305 F.2d 505, 507 n.3, 134 USPQ, 343, 345 n.3
(CCPA 1962), or that a statement in the specification
was inaccurate, In re Marzocchi, 439 F.2d 220, 223
n.4, 169 USPQ367, 370nA (CCPA1971), or that the
invention, was inoperative or lacked utility" In re
Langer, 503F.2d 1380, 1391, 183 USPQ 288,
297 (CePA 1974), or that a claim was indefinite, In re
Glass, 492 F.2d 1228,1232 n.6, 181 USPQ 31, 34 n.6
(CCPA 1974), or thatcharacteristics of prior art products
were known, In re Wilson,311 F.2d 266, 135
USPQ 442 (CCPA 1962)." In re Koller, 613 F.2d 819?
823 n.5, 204 USPQ 702, 706 n.5 (CCPA 1980) (quotinglnreHogan,
559 F.2d 595, 605 n.17, 194 USPQ
527, 537 n.17 (CCPA 1977) (emphasis in original».
However, it is impermissible to use a later factual reference
to determine whether the application is enabled
or described as required under 35 ueS.c. 112, first
paragraph. In re Koller, 613 F.2d 819, 823 n. 5,
204 USPQ 702, 706 n.5 (CCPA 1980). References
which do not qualify as prior art because they postdate'the
claimed invention may be relied upon to
show the level of ordinary skill in the art at or around
the tirne the invention was made. Ex parte Erlich,
22 USPQ 1463 (Bd, Pat. App. & Inter. 1992).
2125 Drawings as Prior Art
DRAWINGS CAN BE USED AS PRIOR ART
Drawings and pictures can anticipate claims if they
clearly show the structure which is claimed. In' re
Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972).
However, the picture must show all the claimed structural
features and how they are put together. Jockmus
v. Leviton, 28 F.2d 812 (2d Cir. 1928). The origin of
the drawing-is immaterial. For.instance, drawings in a
design patent can anticipate or make obvious the
claimed invention as can drawings in utility patents.
When the reference is a utility patent, it does not matter
that the feature shown is unintended or unexplained
in the specificatiou. The drawings must be
evaluated for what they reasonably disclose and suggest
to one of ordinary skill in the art. In re Aslanian,
2100-61 August 2001