Every practitioner (who reads this blog) knows that when an examiner combines separate embodiments disclosed in a single reference, the proper grounds of rejection are under Section 103 (obviousness), not Section 102 (anticipation).

How about when the examiner combines another reference cited in the application with the invention described in that application … or further still, asserts that the reference actually shows the combination by itself? For example, consider an application that cites to shortcomings of a particular reference - does that citation itself create a reason to combine the disclosed invention with that particular reference? Such a rule would add another item in the list of obvious per se concepts. Today we see a case where an examiner takes the position that merely listing a reference in the background is sufficient evidence that actually the document can be cited under Section 102 (anticipation) in that merely listing the reference is necessarily a disclosure of the invention being combined therewith, such that no reason to combine is even necessary? The case is Appeal 2023-000130, Application 15/055,143.

The invention relates to: an ultrasound device for visualizing the position of a needle tip with respect to target tissue. Claim 1 on appeal is listed below:

An ultrasonic diagnostic device configured to transmit an ultrasonic wave toward a subject from an ultrasonic probe, and implemented by a programmed ultrasonic diagnostic device and configured to generate an ultrasonic image based on obtained reception data, the device comprising:
a tissue image generation unit implemented by the programmed ultrasonic diagnostic device and configured to generate a tissue image of the subject by receiving a reception wave in a normal direction of an ultrasonic wave transmitting and receiving surface of the ultrasonic probe, wherein the reception wave is formed from a transmission wave having been transmitted from the ultrasonic probe toward a target tissue of the subject in the normal direction of the ultrasonic wave transmitting and receiving surface, and then received and reflected by the target tissue of the subject;
a needle information generation unit implemented by the programmed ultrasonic diagnostic device and configured to generate needle information of a needle inserted into the subject by receiving, by means of the ultrasonic probe, a reception wave for the needle from a steering direction that extends in a direction steered from the normal direction of the ultrasonic wave transmitting and receiving surface that is a transmitting direction of the transmission wave, to a right angle with respect to a direction in which the needle extends, wherein the reception wave for the needle is formed from the same transmission wave used to generate the tissue image, and received and then reflected by the needle;
a needle direction estimation unit implemented by the programmed ultrasonic diagnostic device and configured to generate a direction of the needle based on the needle information generated by the needle information generation unit;
a search region setting unit implemented by the programmed ultrasonic diagnostic device and configured to set a search region of a needle tip in the tissue image based on the needle direction generated by the needle direction estimation unit;
a needle tip search unit implemented by the programmed ultrasonic diagnostic device and configured to search for the needle tip in the search region set by the search region setting unit; and
a needle tip visualizing unit implemented by the programmed ultrasonic diagnostic device and configured to visualize the needle tip on the tissue image based on the needle tip found by the needle tip search unit, wherein the needle information generated by the needle information generation unit is needle image data, wherein the tissue image and a needle image based on the needle image data are generated by one transmission of the transmission wave, and
wherein the search region setting unit acquires the needle direction from the needle direction estimation unit and acquires the tissue image from the tissue image generation unit, visualizes by superimposing the needle direction on the tissue image, and sets the search region for searching for the needle tip on the tissue image based on the needle direction on the tissue image.

The examiner relied on two references in combination. However, as part of reliance on the secondary reference (Karasawa), the examiner combined two sections, one based on the actual teachings of Karasawa and the other being Karasawa’s description of a prior art reference (JP ’859) in the Background section of Karasawa.

According to the examiner, by definition since Karasawa was an improvement on the prior art reference, it is proper to rely on the combined teachings of the prior art and Karasawa. Specifically, the Examiner asserted that the invention of Karasawa is an iteration and/or improvement upon the prior art including the teachings of JP ’859 and cited to a statement that the invention described therein was “achieved in view of the above-mentioned points.” From this, the examiner concluded that “the teaching[s] of [JP ’859] that are explicitly stated in paragraph [0015] of Karasawa are part of the invention and disclosure of Karasawa.”

The PTAB disagreed.

… Paragraph 15 of Karasawa appears in the “Background of the Invention” section of Karasawa’s specification, which describes several prior-art devices, including the JP ’859 device discussed in
paragraph 15. Karasawa ¶¶ 2–16. Karasawa criticizes this prior art, …Thus, Karasawa’s subsequent statement in the “Summary of the Invention” section that “[t]he present invention has been achieved in view of the above-mentioned points” likely means that Karasawa’s invention is a departure from the described prior art, not an incorporation of it. Accordingly, it is incorrect to deem paragraphs 15, 41, and 49 as discussing the same invention.

The Examiner makes clear in the Answer that paragraph 15 is relied on to teach that the “second reception direction is normal/orthogonal/forms a right angle to the direction of extension of the puncture . . . needle 115.” Ans. 4. Assuming arguendo that this is correct, the Examiner would then
need to explain why one of ordinary skill in the art would have combined this prior-art teaching with Karasawa’s device. Because the Examiner has not done so, the Examiner has not demonstrated that the combination of Tashiro (or Wang) and Karasawa teaches or suggests all of the limitations of
independent claims 1, 13, and 14.

The examiner was not able to bootstrap the disclosure of Karasawa with the prior art cited in the background because it was not clear that Karasawa’s disclosure incorporated the prior art and merely built upon it. If Karasawa has indeed disclosed as much, the examiner’s rejection may have overcome this attack. So, if you have an examiner combining a reference with teachings in the background, consider the matter carefully to see whether the examiner must show a proper reason to combine the features, or whether the reference itself actually discloses the combination.