35 U.S.C. 102 a-g and 103; MPEP 2100

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35 USC 102(a)

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.

When does a 35 USC 102(a) apply?

102(a) applies if the invention was known or used before the date of invention(not the filing date) by a 3rd party.
Overseas Activities-activities in NAFTA countries (12/8/93) and WTO countries (1/1/96) may be introduced to prove earlier conception and RTP.

What four steps must be performed to overcome a 102(a) Rejection?

1)Prove an earlier date of invention (Rule 31)
2)Show the references' disclosure was derived from applicant-use disclaiming affidavits ("an affidavit or declaration under 37 CFR 1.131 antedating the reference")
3)Amend claims, arguing to examiner; of an earlier patent application--"a reply which perfects a claim of priority under 35 U.S.C. 119 (a)-(e) or 35 USC 120
4)Filing an application date sheet with specific reference to prior application

How does one prove an earlier date of invention (Rule 31)?

1)Swear behind a prior art reference;
2)Reduction to practice before the application filing date; or
3)Conception and diligence before the prior art reference until RTP

What are acceptable earlier patent applications to overcome a 102 rejection?

1) provisional
2) foreign (119 is ok to establish earlier date of invention)
3) divisional

When is a claim considered anticipated?

1) A claim is anticipated only if every single element of that claim is found, either expressly or inherently, in a single prior art reference
2)When any of several structures or compositions within the scope of a claim is known in prior art
3)When the elements in prior art are arranged as required by the claim (identity of terminology is not required)

At what three times is it permissible to use multiple references in a 35 U.S.C. 102 rejection?

1)To prove the primary reference contains an "enabled disclosure;"
2)To explain the meaning of a term used in the primary reference; or
3)To show that a characteristic not disclosed in the reference is inherent

Why is a "motivation to combine references" not required for "enabled disclosure?"

Additional references--patents--were only submitted as evidence of what was in the public's possession before invention.

Genus-species situations

A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus, thus the species anticipates the claim no matter how many other species are named.[MPEP 2131.02]

When can a generic formula anticipate a claimed species?

A generic chemical formula of a prior art will anticipate a claimed species covered by the formula when the species can be "at once envisaged" from the formula.

Anticipation of Ranges

A specific example int the prior art which is within a claimed range anticipates the range
Prior art which teaches a range overlapping or touching the claimed range anticipates if the prior art range discloses the claimed range with "sufficient specificity" [MPEP 2131.03]

Secondary Considerations

Evidence of secondary considerations, e.g. unexpected results or commercial success, is irrelevant to 35 USC 102 rejections and cannot overcome a rejection so based [MPEP 2131.04]

Nonanalogous or Disparaging Prior Art

The question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis and are not germane to a rejection under section 102.[MPEP 2131.04]

Secret use of process

Secret use with the sale of the product does not result in public use of the process unless the public could learn the claimed process by examining the product and cannot result in a 35 USC 102(a) rejection if an exam of the product would not reveal the process

In this country

Prior knowledge or use which is not present in the US, even if widespread in a foreign country, cannot be the basis of a rejection under 35 USC 102(a)

When is a 35 USC 102(a) prima facie case established?

1)When reference publication is by others
2) If within 1 year prior to the filing date, the invention, or an obvious variant thereof, is described in a "printed publication" whose authorship differs in any way from the inventive entity unless it is started within the publication itself that the publication is describing the applicant's work [MPEP 2132.01]

How can an applicant overcome a prima facie case for section 102?

1) filing an affidavit made out by the other authors establishing that the relevant portions of the publication originated with, or were obtained from, applicant (called a disclaiming affidavit)
2) submitting a specific declaration by the applicant establishing that the article is describing applicant's own work
3) adding the coauthors as inventors to the application if the requirements of 35 USC 116, 3rd paragraph are met [MPEP 2132.01]

In re Katz

[MPEP 2132.01], see also [MPEP 2136.05]

Ex parte Kroger

[MPEP 2132.01], see also [MPEP 2136.05]

What can be submitted to overcome a 35 USC 102(a) rejection?

When the reference is not a statutory bar under 35 USC 102(b), (c), or (d), applicant can overcome the rejection by swearing back of the reference through the submission of an affidavit under 37 CFR 1.131 [MPEP 2132.01]

In re Foster

...

In re Facius

...

2133 35 USC 102(b)

A person shall be entitled to a patent unless (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 US

102(b) aka "more than one year statutory bar"

To reject claims under section 102(b) the examiner can cite anyone's prior art or activity by a 3rd party or the applicant. This includes any patent, any printed publication, but only public use or on sale in the US more than one year before the US application date. This creates an absolute bar (dates of invention are irrelevant).

When do continuation (sec.120) divisional (sec.121) applications have an earlier date?

1)specification contains a reference to old application
2)Old application supports new claims (sec. 112)
3)New application is filed before old application issues or is abandoned

When do provisional applications have an earlier date?

Applicant has up to 12 months to file a patent application that depends on the provisional (section 111(b). If the application is filed within the 12 month period, the application can claim priority to the provisional's filing date.

When do provisional applications have an earlier date?

An earlier filed foreign application cannot be used to overcome a 102(b) bar. Only entitled to sec. 119 foreign filing date if during pendency of US application:
1)foreign application is identified
2)same inventors
3)same invention
4)foreign application must satisfy, via sec 112, new US claims

When are US patents considered prior art?

Date of issuance (not filing or publication)

When are foreign patents considered prior art?

Date the rights become enforceable [MPEP sec. 2126.01]

Which issued patents cannot be considered prior art?

Secret or private

Printed Publication

A reference is a printed publication if one of ordinary skill in the art can locate it with reasonable diligence. Its availability as prior art under 102(b) depends on proof of when the reference was "published" or became publicly available.

What are the 4 conditions for printed publications?

1) Must be publicly accessible when it reaches the public
2) Catalogued and indexed in a library
3) Confidential disclosures are not printed publications
4) Published patent application is a printed publication

What is considered public use?

1) Only US
2) Can be public or hidden use (bra)
3) Cannot be a secret use (inventor maintains control)

On sale

"On sale" includes inventions that were sold, offered for sale, or tested (offered for sale and ready for patenting) in the US

Offer

need not be accepted; details about product do not have to be disclosed; offer can be by anyone; sale need not be public; an offer to assign rights to patent is not a offer; date is when offer is mailed

Exception

Gore where a patented method is kept secret, but there is a sale of the product from the method, such a sale is a bar if made by the patentee, but not a bar if the sale is made by a 3rd party.

Ready for Patenting (RTP)

invention is physically built and tested (known to work for intended purpose) or enabling drawings or other descriptions

Experimental Use

(subjective intent of inventor) perfecting invention to see if it will work for intended purpose; extent of control is a key factor

Note

The public sale bar applies even if the invention is misappropriated.

How can one overcome a 102(b) rejection?

A 102(b)--statutory bar to patentability--can be overcome by:
1) amending the claims;
2) arguing claims are distinguishable from prior art;
3) experimental use;
4) earlier filing date (provisional, continuation, divisional);
5) application data sheet [same as 102(a)]

What cannot overcome a 102(b) bar?

1) a section 119 foreign filing date cannot be used to avoid a 102(b) bar
2) The 102(b) rejection cannot be overcome by evidence that the product in the reference does not necessarily or inherently possess a characteristic of the applicant's claimed product
3) swearing behind a 102(b) reference

What does it mean to "swear behind a 102(b) reference?

Applicant provides a 37 CFR 1.131 affidavit that shows that applicant was the first to invent and either the first to reduce the invention to practice or, if applicant was the first to invent, but the reference has an effective priority date before applicant's invention was reduced to practice, the affidavit must also show that applicant used due diligence from the time just prior to the reference's effective date up to applicant's actual or constructive (the filing of the application) reduction to practice.

Due diligence

Affirmative reasons for the delay in filing or by acceptable excuses

New AIPA section 122(b)

US patent applications shall be published 18 months from the earliest filing date sought; except: Applications no longer pending; subject to secrecy; provisionals; if applicant certifies that the invention disclosed has not and will not be the subject of a foreign patent application

Rejections of Continuation-In-Part (CIP) Applications

If claims are not suppported by parent effective filing date is the filing date of the child CIP
2) Any prior are disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the CIP will bar the issuance of a patent under 102(b)

35 USC 102(c) [MPEP 2133.03(c) The Invention

Abandonment
inventor intended to abandon invention. Inventor must intend to dedicate his invention to the public (a delay in the application process is not sufficient proof for abandonment

How must abandonment be expressed for 102(c)?

It must be a deliberate surrender of any rights to a patent
it may be expressed or implied, by actions or inactions of the inventor

35 USC 102(d) [MPEP 2135]

A person shall be entitled to a patent unless (d) the invention was first patented or caused to be patented, or was the subject of inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the US.

An application can be barred from obtaining a patent if all of which four conditions are met?

1) Filed more than 1 year before the effective filing date of the US application;
2) Filed by the same applicant, or his legal assigns, as the US application;
3) Issued as a patent or inventor's certificate before the filing of an application in the US (the patent rights granted must be enforceable, but need not be published); and
4) involves the same invention

35 USC 102(e) [MPEP 2136]

A person shall be entitled to a patent unless (e) the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language

Where does 35 USC 102(e) apply?

This title applies in the exammination of all applications, and the reexamination of, or other proceedings to contest, all patents, with only one exception: when the potential reference is based on an international application filed prior to November 29, 2000.

When can US patents claim benefit of an IA prior art date and have the IA filing date?

1) if IA was filled on or after 11/29/00; the IA designated the US; and published in English
2) if US Application Publications--is prior art of the application's US effective filing date, which can include an IA filing date, if it meets above 3 conditions

How does one overcome a rejection under 102(e)?

A 35 USC rejection can be overcome by antedating the filing date of an earlier foreign priority or provisional application if 35 USC 119 is met and said application "supports"(meets 112a requirements) all the claims of the US application or;
2) showing that disclosure relied on is applicant's own worke by antedating the filing date of the reference by submitting an affidavit or declaration under 37 CFR 1.132 establishing disclosure is applicant's work or

35 USC 102(f) "Derivation"
[MPEP 2137]

A person shall be entitled to a patent unless he did not himself invent the subject matter sought to be patented

What does 35 USC 102(f) require?

Derivation requires proof that the entire invention was previously conceived by another

What two ways can a 35 USC 102(f) rejection be overcome?

1) an affidavit under 37 CFR 1.131, or
2) an affidavit under 37 CFR 1.132 showing that the relevant disclosure is a description of the applicant's own work

What makes 35 USC(f) unique to 102(a) and 102(e)?

"Derivation" does not require an inquiry into the relative dates of a reference and the application, and therefore may be applicable where subsections (a) and (e) are not available for references having an effective date subsequent to the effective date of the application being examined.

Inventorship [MPEP 2137.01]

1) Executors of oath or declaration under 37 CFR 1.63 are presumed to be the inventors
2) One must contribute to the conception to be an inventor reduction to practice, per se, is irrelevant.

Intellectual domination

In arriving at conception, an inventor may consider and adopt ideas and materials derived from other sources such as an employee or hired consultant, so long as he maintains intellectual domination of the work through pluses and minuses even if suggestion proves to be the key that unlocks the problem

Morse v. Porter

...

Inventor is not required to reduce the invention to practice

1) One following oral instructions is viewed as merely a technician
2) Inventors need not personally construct and test their invention
3) A noninventor's work can merely be that of a skilled mechanic carrying out the details of a plan devised by another

What are the three requirements for joint membership?

1) they did not physically work together or at the same time,
2) each did not make the same type or amount of contribution, or
3) each did not make a contribution to the subject matter of every claim of the patent

35 USC 102 (g) "Prior Invention"
[MPEP 2138]

A person shall be entitled to a patent unless (g)(1)during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other

What does 35 USC 102(g) concern?

Issues such as conception, reduction to practice and diligence, while more commonly applied to interference matters, also arise in other contexts.

What are two main conditions for "Prior Invention?"

1) The first to reduce to practice (RTP) wins unless 2nd to RTP can prove earlier conception and diligence from time prior to first's conception to subsequent RTP or filing
2) Publications are not constructive RTP

Under what two conditions may 35 USC 102(g) form the basis for ex parte rejection?

1) the subject matter at issue has been actually reduced to practice by another applicant's invention; and
2) there has been no abandonment, suppression or concealment

Conception

the complete performance of the mental part of the inventive act and the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.

When is conception established?

Conception is established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill.

Reasonable Diligence

The diligence of 35 USC 102(g) relates to reasonable "attorney-diligence" and "engineering-diligence," which does not require that "an inventor or his attorney...drop all other work and concentrate on the particular invention involved."
2) if attorney worked reasonably hard on the application during the continuous critical period
3) If the attorney has a reasonable backlog of unrelated cases which he takes up in chronological order and carries out expeditiously, that is sufficient

35 USC 103 "Obviousness"
[MPEP 2141]

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior are such that the subject matter as a whole would have been obvious 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.

Combining references

There must be some motivation to combine; the suggestion does not have to be explicit; the reason the reference suggests for combining can be different from the actual reason

Objective Considerations

affidavits or declarations containing evidence of: commercial success, unexpected results, failure of others, long felt need, skepticism of experts, copying by others

When can't 102(e, f, g) be used as a reference for obviousness?

When the reference subject matter and the patent app subject matter were owned by the same person or assignable to the same entity at the time invention was made

What four factual inquiries are obviousness and nonobviousness determined under section 103 [Graham three prongned test]?

1) the scope and content of the prior art are to be determined
2) differences between the prior art and the claims at issue are to be ascertained
3) the level of ordinary skill in the pertinent art resolved
4) Evaluating evidence of secondary considerations

What four tenets must be adhered to avoid rejection under 35 USC 103?

1) The claimed invention must be considered as a whole
2) The reference must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination
3) The references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention; and
4) Reasonable expectation of success is the standard with which obviousness is determined

What are secondary considerations under section 103?

Objective evidence
1) Unexpected results
2)commercial success
3) long-felt need
4) failure of others
5) copying by others
6) licencing and
7) skepticism of experts

What must be done before answering Graham's content inquiry?

It must be known whether a patent or publication is in the prior art under 35 USC 102

What determines what section 103 is based on in 35 USC 102 (a), (b), (e) etc.?

Depending on the type of prior art refernce used and its publication or issue date

What must an examiner determine for the purpose of analyzing the obviousness of the subject matter at issue?

The examiner must determine what is "analogous art." The reference must either be in the field of the applicant's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.

What factors may be considered in determining ordinary skill in the art?

1) educational level of the inventor;
2) type of problems encountered in the art;
3) prior art solutions to those problems;
4) rapidity with which innovations are made;
5) sophistication of the technology; and
6) educational level of active workers in the field

Legal concept of prima facie obviousness

A procedural tools of examination which applies broadly to all arts and allocates who has the burden of going forward with production of evidence in each step of the examination process.

What three basic criteria must be met to establish prima facie obviousness?

1) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings
2) there must be reasonable expectation of success
3) the prior art reference (or references when combined) must teach or suggest all the claim limitations

Who is the initial burden of proof on for prima facie obviousness?

The examiner
has to provide some suggestion to support the conclusion that the claimed invention is directed to obvious subject matter

What may support a conclusion of nonobviousness?

At least some predictability is required to conclude obviousness, but applicants may present evidence showing there was no reasonable expectation of success.

What is the strongest rationale for combining references [MPEP 2144]?

The expectation of some advantage or expected beneficial result would have been produced by their combination

Implicit Disclosure [2144]

It is proper to take into account specific teachings and inferences which one skilled in the art would reasonably be expected to draw therefrom

Elimination of a step or element and its function

1)Omission of an element and its function is obvious if the function of the element is not desired
2) Omission of an element with Retention of the element's function is an indicia of unobviousness

Changes in Sequence of Adding Ingredients

Selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results

Close structural similarity between chemical compounds (homologs, analogues, isomers)

Rejection based on close structural similarity is founded on the expectation that compounds similar in structure will have similar properties

How can obviousness of structure be rebutted?

Rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties

Consideration of Applicant's rebuttal arguments

1) argument does not replace evidence where evidence is necessary
2) mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention
3) One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references
4) economic infeasibility does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility
5) applicant may argue that examiner's conclusion is based on improper hindsight reasoning
6) applicant may argue the examiner is applying improper "obvious to try" rationale in support of an obviousness rejection [See O'Farrekk

Case law relevant to claim interpretation

MPEP 2111-2116.01

Teaching away

It is improper to combine references where the references teach away from their combination

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