Patents: Nonobviousness

1
Patents Nonobviousness

• Fall 2005
• Prof. Loren

2
Patentability Requirements
?

• Patentable subject matter
• Utility (usefulness)
• Written description Enablement ( 112)
• Novelty ( 102)
• Statutory bars
• Non-obviousness ( 103)

?
?
?
3
35 U.S.C. 102(b)

• A person shall be entitled to a patent unless --
• the invention was patented or
• described in a printed publication
• in this or a foreign country,
• OR
• it was in public use or on sale
• in this country only
• more than one year prior to the date of the
  applicn

4
Policies underlying 102(b)- on-sale

• Policy against removing inventions from the
  public which the public is already enjoying as a
  consequence of prolonged sales activity
• Policy favoring prompt and widespread disclosure
  of new inventions
• Policy preventing inventors from commercially
  exploiting the exclusivity of his invention
  substantially beyond the statutorily authorized
  one year period
• Policy allowing the inventor a reasonable amount
  time (one year) following sales activity to
  determine whether a patent is worthwhile
• But be careful if international protection is
  desired!!!

5
35 U.S.C. 102(b)

• A person shall be entitled to a patent unless --
• the invention was patented or
• described in a printed publication
• in this or a foreign country,
• OR
• it was in public use or on sale
• in this country only
• more than one year prior to the date of the
  applicn

6
On-Sale

• Two requirements
• The product must be the subject of a commercial
  offer for sale
• Do not need a completed sale
• Must be sale of product not sale of patent
• Invention must be ready for patenting
• Does not need to be completed
• Do not need prototype
• Constructive reduction to practice sufficient
• Starts the one-year clock (in the U.S.)
• Internationally no grace period at all

7
Rules to take away from the Statutory Bars

• Be careful if you offer to sell the invention
  prior to filing for your patent (even if you
  dont think the patent is done) -- the clock
  starts ticking
• Other countries offer NO grace period
• Same for publishing (publish and perish)
• Be careful that experimental use is done under
  controlled circumstances, so that the invention
  is not used in the U.S.
• Market testing does not count as experimental use
  of the invention, it triggers the one year clock

8
Priority

• Under Current Law
• We dont use a first to file rule
• We use a first to invent rule
• May change soon
• Must have a system for determining first
• Section 102(g)
• We look at who reduced it to practice first
  (without abandoning it)
• We also look at who conceived of it first and
  their diligence in reducing the invention to
  practice

9
Non-Obviousness

• 1851 - Hotchkiss
• must show more ingenuity and skill than possessed
  by ordinary mechanic acquainted with business
• 1941 - Cuno
• must reveal the flash of creative genius
• 1950 AP Tea Co.
• synergism - whole must be greater than sum of
  parts
• 1952 - Congress enacts 103
• 1966 - Graham v. John Deere (S. Ct.)

10
Graham v. John Deere(S. Ct. 1966)

• p. 174
• Jefferson, like other American, had an
  instinctive aversion to monopolies.
• The patent monopoly was not designed to secure
  the inventor his natural right in his
  discoveries. Rather, it was a reward, an
  inducement, to bring forth new knowledge.
• p. 175
• Target those inventions which would not be
  dis-closed or devised but for the inducement of a
  patent

11
Why Test for Obviousness?

• Inventions are solutions to problems
• What kind of solutions will artisans have ?
• Things in the art not inventions any more
• New things that are obvious to ordinary artisan
• New things that take more skill and ingenuity
  than simply following ordinary practice
• First two kinds are likely even without reward
• Dont pay for things youll get for free

12
35 U.S.C. 103(a)

• A patent may not be obtained even if the
  invention is new if the differences between the
  subject matter sought to be patented and the
  prior art are such that the subject matter as a
  whole would have been ob-vious at the time the
  invention was made to a person having ordinary
  skill in the art to which said subject matter
  pertains. Patentability shall not be negatived
  by the manner in which the invention was made.

13
Graham Factors

• several basic factual inquiries
• Scope and content of the prior art
• Differences between the prior art and the claims
  at issue
• Level of ordinary skill in the pertinent art
• Secondary considerations such as commercial
  success, long felt but unsolved needs, failure of
  others

14
Stratoflex v. Aeroquip (Fed Cir 1983)

• Tech Teflon tubing for high-pressure fuel lines
• Aeroquip owns Slade patent, makes tubing
• Stratoflex makes competing tubing
• Problem in the prior art teflon tubing?

15
Stratoflex contd

• Presumption of validity
• What if attacker shows prior art not before PTO ?
• Standard of review?
• Scope and content of the prior art--
• Is prior art about rubber tubing pertinent ?
• What is the content of the prior art?
• Differences between the prior art and the claims
  at issue?
• Level of ordinary skill in the pertinent art?

16
Stratoflex contd

• Dissipating static charge from inside a tube
• Goodrich hose, Ab-Up Rept, 360, 205, 132, etc
• Making tube layers with different properties
• 288, 249, 690
• Adding conductive particles to teflon
• Goodrich hose, Ab-Up Rept
• Extruding teflon plus carbon black (e.g., color)
• 174, 707, 637, 265

17
Stratoflex contd

• Secondary considerations
• Can we leave these for close cases only ?
• Valid evidence of this type for Aeroquip ?
• Nexus What does this mean ?
• We license the entire industry ?
• Retrofit?
• Military specs ?
• Failure of others ?

18
Stratoflex contd

• Synergism ?
• Any reversible error here ?
• Combination patent?
• Any reversible error here ?

19
In re Vaeck ( Fed. Cir. 1991)

• Bacillus protein kills mosquito, black fly if
  eaten
• Spreading spores w/ protein where they eat?
• Claimed invention Modified cyanobacterium gene
  that codes for Bacillus protein, with
• a promoter good for cyanobacterium
• a Bacillus gene that codes for protein
• PTO says, this is obvious in light of A B C
• Can the PTO put the references together ?

20
Vaeck

• Dzelzkalns reference
• hybrid with promoter good for cyanobacterium
• gene for protein, CAT, that resists antibiotics
• Selkar I, Selkar II, Ganesan references
• Bacillus genes that code for insecticidal
  proteins
• get more by putting in hosts from other species
• Why isnt this good enough ?
• What about OFarrell case?

21
In re Dembiczak (Fed Cir 1999)

• Jack-o-lantern trash bag
• Problem solved
• unsightly trash bags placed on the curbs of
  America
• and its festive, too!
• Consumer reaction ?

22
Dembiczak contd

• Prior art ?
• Orange plastic bags for leaves or trash ?
• Jack-o-lantern made from stuffed paper bag ?
• Jack-o-lantern stuffed with wadded paper ?
• Difference(s) from prior art ?
• PTO obvious Why ?
• Fed Cir not obvious on this record
• Why not ?

23
Dembiczak contd

• Sources for suggestion to combine / modify
• Prior art references
• Knowledge of one of ordinary skill
• Nature of the problem to be solved
• Could PTO support an obviousness rejection using
  the prior art we know about ?
• What other prior art might be helpful ?

24
Suggestion or Motivation to Combine or Modify

• Just prior to invention
• Art must have provided
• Suggestion, teaching, or motivation to combine or
  modify prior art references to make invention
• AND
• Reasonable expectation of success