The doctrine of anticipation under Section 102 is one of the most settled areas of patent law. A reference either discloses the features of a claim or it does not. True, there are nuances to the doctrine, such as inherent disclosure of the applied reference and the broadest reasonable interpretation of claim terms. But for the most part, to support an anticipation rejection, an Examiner must point to where in an applied reference the features of a claim is disclosed and the anticipation rejection should be on solid ground.
Because the doctrine of anticipation is pretty straightforward, one would expect that the frequency that an Examiner is overturned would be relatively low. But the appeals decisions of such rejections tell a surprisingly different story. Looking back at the past six months of ex parte appeal decisions from the Patent Trial and Appeal Board (PTAB) for those decisions involving at least one section of 35 USC 102 reveals that anticipation rejections are among the highest reversed rejections:
In 58% of the decisions, the Board reversed the Examiner for at least one appealed claim.
In 49% of the decisions, the Board reversed the Examiner for all appealed claims.
The data set included the 976 total decisions in which 35 USC 102 (all sections) was an issue in an ex parte appeal. A total of 481 decisions wholly reversed the Examiner on anticipation grounds, and a total of 85 decisions partially reversed the Examiner on anticipation grounds. Appeals from reexamination proceedings were not included in the data.
These data indicate that where the issue is anticipation of the claims, the practitioner has better than 50% odds of having the Board reverse the Examiner.