Novelty: Whats New

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Novelty Whats New?

• Patent Law
• Prof Merges
• 2.11.08

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Novelty 102
A person is not entitled to a patent if the
invention was
in the prior art (as defined by 102 (a), (e),
(g))
barred under 102 (b), (c), (d)
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Novelty (Anticipation) 102(a) Versus
Statutory Bars 102(b)

• Novelty/Anticipation concerned with NEWNESS is
  it original to the patent applicant/patentee?
• Statutory Bars concerned with TIMELINESS did
  the inventor file soon enough?

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102. Novelty and loss of right to patent

• A person shall be entitled to a patent unless
• (a) the invention was known or used by others in
  this country, or patented or described in a
  printed publication in this or a foreign country,
  before the invention thereof by the applicant for
  patent, or
• (b) the invention was patented or described in a
  printed publication in this or a foreign country
  or in public use or on sale in this country, more
  than one year prior to the date of the
  application for patent in the United States, or .
  . . .

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102. Novelty and loss of right to patent

• A person shall be entitled to a patent unless
• (a) the invention was known or used by others
  before the invention thereof by the applicant for
  patent, or
• (b) the invention was patented or described in a
  printed publication , more than one year prior
  to the date of the application for patent in the
  United States, or . . . .

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Critical Concept the Critical Date
The Invention Date
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Novelty Critical Date Example
Reduction to practice 7/12/1886
Filed 6/7/1889
Conception Summer 1886
Unpacking the invention date
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In re Robertson

• Page 365
• Held Claim 76 not anticipated

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• United States Patent 5,279,604 Robertson ,   et
  al. January 18, 1994
• Mechanical fastening systems with disposal means
  for disposable absorbent articles
• Abstract
• A disposable absorbent article with a mechanical
  fastening system having an additional fastening
  element so as to provide convenient disposal of
  the absorbent article. The mechanical fastening
  system preferably comprises a tape tab having a
  first fastening element, a landing member
  comprising a second fastening element engageable
  with the first fastening element, and an
  additional fastening element for allowing the
  absorbent article to be secured in a
  configuration that provides convenient disposal
  of the absorbent article. The additional
  fastening element preferably comprises a second
  fastening element affixed to the backing surface
  of at least one of the tape tabs
• Inventors Robertson Anthony J. (Blue Ash, OH)
  Scripps Charles L. (Brookfield, WI) Assignee
  The Procter Gamble Company (Cincinnati, OH)
  Appl. No. 918156 Filed July 20, 1992

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(No Transcript)
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Claim 76

• A mechanical fastening system for forming side
  closures . . . comprising
• 1 a closure member . . . comprising a a first
  mechanical fastening means for forming a closure,
  said first mechanical fastening means comprising
  i a

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• first fastening element
• 2 a landing member . . . comprising a a
  second mechanical fastening means for forming a
  closure with said first mechanical fastening
  means, b said second mechanical fastening means
  comprising a second fastening element
  mechanically engageable with said first element
  and

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• 3 disposal means for allowing the absorbent
  article to be secured in a disposal configuration
  after use, said disposal means comprising a a
  third mechanical fastening means for securing the
  absorbent article in the disposal configuration,
  said third mechanical fastening means comprising
  i a third fastening element mechanically
  engageable with said first fastening element . .
  . .

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In re Robertson

• Claim 76
• A mechanical fastening system for forming side
  closures comprising
• 1 a closure member comprising
• a a first mechanical fastening means, said
  means comprising
• i a first fastening element . . .
• 2 a landing member, comprising . . .
• 3 disposal means, comprising . . .

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• 1 a closure member
• 2 landing member
• 3 disposal means

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Prior Art

• United States Patent 4,895,569 Wilson,   et al.
  January 23, 1990 Fastening system for a
  disposable absorbent garment having a tailored
  seam

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United States Patent 4,895,569 Wilson ,   et al.
January 23, 1990 Fastening system for a
disposable absorbent garment having a tailored
seam
Filed July 20, 1992
The (Presumptive) Invention Date Robertson
application filed
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• United States Patent 4,895,569 Wilson ,   et al.
  January 23, 1990 Fastening system for a
  disposable absorbent garment having a tailored
  seam
• Abstract
• A disposable absorbent garment (10) of the type
  having opposed engageable waistband portions (14)
  separated by an intermediate portion (16),
  comprises a breathable elastomeric nonwoven
  fabric outer cover (12) and a superposable
  absorbent structure (32),
• Inventors Wilson John C. (Neenah, WI) Rajala
  Gregory J. (Neenah, WI) Boland Leona G.
  (Neenah, WI) Zehner Georgia L. (Larsen, WI)
  Assignee Kimberly-Clark Corporation (Neenah, WI)
  Notice The portion of the term of this
  patent subsequent to October 20, 2004 has been
  disclaimed.Appl. No. 089647
• Filed August 25, 1987

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(No Transcript)
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Wilson specification

• Disposal of the soiled garment . . . Is easily
  accomplished by folding the front panel . . .
  Inwardly and then fastening the rear pair of
  mating fastening members to one another, thus
  neatly bundling the garment . . .

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P. 364

• Anticipation under 35 U.S.C. 102(e) requires
  that each and every element as set forth in the
  claim is found, either expressly or inherently
  described, in a single prior art reference.
  Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d
  628, 631, 2 U.S.P.Q.2D (BNA) 1051, 1053 (Fed.
  Cir. 1987)

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Inherency p. 364

• To establish inherency, the extrinsic evidence
  must make clear that the missing descriptive
  matter is necessarily present in the thing
  described in the reference, and that it would be
  so recognized by persons of ordinary skill.

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• Wilson reference
• Closure member
• Landing member
• Disposal means with . . .
• 3rd fastening element?
• Wilson specification fasten rear pair of mating
  fastening members to one another . . . p 368

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Fed Cir

• The Board made no attempt to show that the
  fastening mechanisms of Wilson that were used to
  attach the diaper to the wearer also
  necessarily disclosed the third separate
  fastening mechanism of claim 76 used to close the
  diaper for disposal, or that an artisan of
  ordinary skill would so recognize. It cited no
  extrinsic evidence so indicating.

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• The Board failed to recognize that the third
  mechanical fastening means in claim 76, used to
  secure the diaper for disposal, was separate from
  and independent of the two other mechanical means
  used to attach the diaper to the person. .. The
  Boards analysis rests upon the very kind of
  probability or possibility the odd use of
  fasteners with other than their mates that this
  court has pointed out is insufficient to
  establish inherency.

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Bd of Appeals opinion

• An artisan would readily understand the
  disposable absorbent garment of Wilson . . . as
  being inherently capable of making the secondary
  load-bearing closure means (third fastening
  element) mechanically engageable with the other
  snap fasteners on the fastening strip (first
  fastening element) i.e., using the secondary
  closure not with its mate, but with one of the
  primary snap fasteners.

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Novelty 102
A person is not entitled to a patent if the
invention was
in the prior art (as defined by 102 (a), (e),
(g))
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(No Transcript)
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District Court

• SRI patents anticipated by SRI International,
  Inc.'s ("SRI's") own prior art publication "Live
  Traffic Analysis of TCP/IP Gateways"

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Slip op. at 2

• Because the district court correctly determined
  that the EMERALD 1997 paper anticipated the '212
  patent, this court affirms that decision.

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• SRI displayed the paper on its web site on
  November 10, 1997.
• SRI filed its patent application on November 9,
  1998, one day before the critical date of
  November 10.

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• The Internet Society ("ISOC") posted the 1998
  SNDSS call for papers on its web site. The call
  for papers stated that all submissions were to be
  made via electronic mail by August 1, 1997 with a
  backup submission sent by postal mail. The call
  for papers announcement did not include any
  information on confidentiality of paper
  submissions. On August 1, 1997, Mr. Porras sent
  an email to Dr. Bishop, the Program Chair for
  SNDSS, in response to the SNDSS call for papers.
  Mr. Porras attached the Live Traffic paper to his
  email.

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• The record reflects seven instances in which Mr.
  Porras previously directed people to the EMERALD
  subdirectory to find other papers related to the
  EMERALD project. In four instances, Mr. Porras
  provided the full path and filename of the paper.
  In every instance, Mr. Porras directed the people
  to a specific paper, which included the term
  emerald in the filename

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• According to the district court, the evidentiary
  record "indicates that the ftp//ftp.csl.sri.com
  site was publicly accessible." SRI Int'l, Inc.,
  456 F. Supp. 2d at 629. Furthermore, the district
  court determined that the evidence clearly showed
  "Mr. Porras provided this aforementioned FTP
  site to other members of the intrusion detection
  community both in presentations and via email."
  Id.

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• SRI asserted that, as a matter of law, the file
  on SRI's FTP server containing the Live Traffic
  paper fell short of a publication under 102(b).
  SRI contends that the Live Traffic paper sent to
  Dr. Bishop via email and placed on the FTP server
  for seven-days as a backup to this email was a
  private pre-publication communication.

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Slip op at 15

• After review of the record, this court perceives
  factual issues that prevent entry of summary
  judgment of invalidity based on the Live Traffic
  paper. Specifically, this court does not find
  enough evidence in the record to show that the
  Live Traffic paper was publicly accessible and
  thus a printed publication under 35 U.S.C
  102(b).