Intro to Novelty

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Intro to Novelty

• Patent Law
• Sept. 14, 2004

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Newsflash!!
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News Flash

• Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v.
  Dana Corp., __ F.3d __ (Fed. Cir. September 13,
  2004)(Newman, J.)
• "determination of willfulness is made on
  consideration of the totality of the
  circumstances.
• The court also unanimously overruled earlier
  precedent to "hold that that no adverse inference
  that an opinion of counsel was or would have been
  unfavorable flows from an alleged infringer's
  failure to obtain or produce an exculpatory
  opinion of counsel."

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• It unanimously said "no" to the question "When
  the attorney-client privilege and/or work-product
  privilege is invoked by a defendant in an
  infringement suit, is it appropriate for the
  trier of fact to draw an adverse inference with
  respect to willful infringement?"

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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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CLAIM 1 ELEMENTS
Rotating handle at end of bar
U-shaped bar
Cutting element attached to bar
Base, with passageway
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Sample Publication
Cheese Industry Today
New Trends in Slicers by J. Smith
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient For
tightened wire designs,
cutting bar shapes U-shaped,
new cutting elements
tightened wire
passageway in the base.
attached to the bar
tightening can be achieved by rotating the
handle.
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Cheese Industry Today
New Trends in Slicers by J. Smith
NO PATENT GRANTED
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient For
tightened wire designs,
NOVELTY REQUIREMENT NOT MET
cutting bar shapes U-shaped,
new cutting elements
tightened wire
attached to the bar
passageway in the base.
tightening can be achieved by rotating the
handle.
Claim Elements
Claim Elements in Publication
Rotating handle at end of bar
Rotating handle at end of bar
Cutting element attached to bar
Cutting element attached to bar
Base, with passageway
Base, with passageway
U-shaped bar
U-shaped bar
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Sample Publication Revised
Cheese Industry Today
New Trends in Slicers by J. Smith
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient
cutting bar shapes U-shaped,
new cutting elements
tightened wire
passageway in the base.
attached to the bar
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Invention Compared with Prior Art
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
Smith Article
X
X
X
Jones Patent
X
X
Adams Slicer
X
X
INVENTIONNOT ANTICIPATED
NOVELTY REQT MET PATENT GRANTED
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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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Critical Concept the Critical Date
The Invention Date
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Critical Concept the Critical Date
The Invention Date
The Prior Art
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Earlier Invention, Earlier Critical Date, LESS
PRIOR ART
The Invention Date
The Prior Art
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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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Statutory Bar Example
4/8/81
Pfaff Files Patent Application
Order Filled
The Critical Date for the Patent Application
Texas Instruments places P.O. for 30,100 new
chip carriers
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Statutory Bar
4/8/81
Pfaff Files Patent Application
Order Filled
The Critical Date for the Patent Application
More than one year before filing
Texas Instruments places P.O. for 30,100 new
chip carriers
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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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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 Invention Date Robertson application filed
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Wilson Patent Issued before the Critical Date
The Robertson Invention Date
The Prior Art
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Wilson Patent is IN THE PRIOR ART
The Robertson Invention Date
The Prior Art
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Securing Tab
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Alternative Embodiment No separate securing tab
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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 . . .
• b a landing member, comprising . . .
• c disposal means, comprising . . .

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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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• 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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