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When applicant states that something is prior art, it is taken as being available as prior art against the claims. Admitted prior art can be used in obviousness rejections. In re Nomiya, 509 F.2d 566, 184 USPQ 607, *>611< (CCPA 1975) (Figures in the application labeled "prior art" held to be an admission that what was pictured was prior art relative to applicant's invention.).
The preamble elements in a Jepson-type claim (i.e., a claim of the type discussed in 37 CFR 1.75(e); see MPEP § 608.01(m)) "are impliedly admitted to be old in the art, ... but it is only an implied admission." In re Ehrreich, 590 F.2d 902, 909-910 200 USPQ 504, 510 (CCPA 1979) (emphasis in original) (citations omitted). See also Sjolund v. Musland, 847 F.2d 1573, 1577, 6 USPQ2d 2020, 2023 (Fed. Cir. 1988); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985); and Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984). Claims must be read in light of the specification. Where the specification confirms that the subject matter of the preamble was invented by another before applicant's invention, the preamble is treated as prior art. However, certain art may be prior art to one inventive entity, but not to the public in general. In re Fout, 675 F.2d 297, 300-301, 213 USPQ 532, 535-36 (CCPA 1982). This is the case when applicant has made an improvement on his or her own prior invention. An applicant's own foundational work should not, unless there is a statutory bar, be treated as prior art solely because knowledge of this work is admitted. Therefore, when applicant explains that the Jepson format is being used to avoid a double patenting rejection over the applicant's own copending application, the implication that the preamble is admitted prior art is overcome. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984). Compare In re Fout, 675 F.2d 297, 300-01, 213 USPQ 532, 535-36 (CCPA 1982) (The court held that the preamble was admitted prior art because the specification explained that Paglaro, a different inventor, had invented the subject matter described in the preamble.).
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