data/2100/s2129.html.txt

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# 2129 Admissions as Prior Art [R-10.2019]

**I.** **ADMISSIONS BY APPLICANT CONSTITUTE PRIOR ART**A statement by an applicant in the specification or made during
 prosecution identifying the work of another as "prior art" is an
 admission which can be relied upon for both anticipation and obviousness determinations,
 regardless of whether the admitted prior art would otherwise qualify as prior art under
 the statutory categories of **[35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. *Riverwood
 Int’l Corp. v. R.A. Jones & Co.,* 324 F.3d 1346, 1354, 66 USPQ2d 1331,
 1337 (Fed. Cir. 2003); *Constant v. Advanced Micro-Devices Inc.,* 848
 F.2d 1560, 1570, 7 USPQ2d 1057, 1063 (Fed. Cir. 1988). Where the admitted prior art
 anticipates the claim but does not qualify as prior art under any of the paragraphs of
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, the claim may be rejected as being anticipated by the
 admitted prior art without citing to **[35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**. 
 


However, even if labeled as "prior art," the
 work of the same inventive entity may not be considered prior
 art against the claims unless it falls under one of the statutory categories.
 *Id.*; see also *Reading & Bates Construction Co. v.
 Baker Energy Resources Corp.,* 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed.
 Cir. 1984) ("[W]here the inventor continues to improve upon his own work product, his
 foundational work product should not, without a statutory basis, be treated as prior art
 solely because he admits knowledge of his own work. It is common sense that an inventor,
 regardless of an admission, has knowledge of his own work."). 
 


Consequently, the examiner must determine whether the subject matter
 identified as "prior art" is applicant’s own work, or the work of another. In the
 absence of another credible explanation, examiners should treat such subject matter as
 the work of another. 
 

**II.** **DISCUSSION OF PRIOR ART IN SPECIFICATION**Where the specification identifies work done by another as "prior art,"
 the subject matter so identified is treated as admitted prior art. *In re
 Nomiya,* 509 F.2d 566, 571, 184 USPQ 607, 611 (CCPA 1975) (holding
 applicant’s labeling of two figures in the application drawings as "prior art" to be an
 admission that what was pictured was prior art relative to applicant’s improvement).
 

**III.** ***JEPSON* CLAIMS**Drafting a claim in *Jepson* format (i.e., the format
 described in **[37 CFR
 1.75(e)](mpep-9020-appx-r.html#d0e320269)**; see **[MPEP § 608.01(m)](s608.html#d0e45061)**) is taken as an
 implied admission that the subject matter of the preamble is the prior art work of
 another. *In re Fout,* 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982)
 (holding preamble of *Jepson*-type claim to be admitted prior art where
 applicant’s specification credited another as the inventor of the subject matter of the
 preamble). However, this implication may be overcome where applicant gives another
 credible reason for drafting the claim in *Jepson* format. *In
 re Ehrreich,* 590 F.2d 902, 909-910, 200 USPQ 504, 510 (CCPA 1979) (holding
 preamble not to be admitted prior art where applicant explained that the
 *Jepson* format was used to avoid a double patenting rejection in a
 co-pending application and the examiner cited no art showing the subject matter of the
 preamble). Moreover, where the preamble of a *Jepson* claim describes
 applicant’s own work, such may not be used against the claims. *Reading &
 Bates Construction Co. v. Baker Energy Resources Corp.,* 748 F.2d 645, 650,
 223 USPQ 1168, 1172 (Fed. Cir. 1984); *Ehrreich,* 590 F.2d at 909-910,
 200 USPQ at 510.
 

**IV.** **INFORMATION DISCLOSURE STATEMENT (IDS)**Mere listing of a reference in an information disclosure statement is
 not taken as an admission that the reference is prior art against the claims.
 *Riverwood Int’l Corp. v. R.A. Jones & Co.,* 324 F.3d 1346,
 1354-55, 66 USPQ2d 1331, 1337-38 (Fed Cir. 2003) (listing of applicant’s own prior
 patent in an IDS does not make it available as prior art absent a statutory basis);
 *see also* **[37 CFR
 1.97(h)](mpep-9020-appx-r.html#d0e321609)** ("The filing of an information disclosure statement shall
 not be construed to be an admission that the information cited in the statement is, or
 is considered to be, material to patentability as defined in **[§ 1.56(b)](mpep-9020-appx-r.html#d0e319407)**.").
 


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