2100 Content Flashcards
35 USC 101 Patent Categories
- Process 2. Machine 3. Manufacturing 4. Composition of Matter
Alice Mayo Method
Must be directed towards:
- Method or Process
- Machine
- Article
- Composition
USC 101 Judicial Exceptions
- Laws of Nature
- Natural Penomena
- Abstract Ideas
Process/Method
Acts or Series of Acts/Steps
Machine
Concrete thing consisting parts or a combination of devices
Manufacture
Something new produced from raw materials that is a new form
Composition of Matter
Combos of 2 or more substances either chemically or mechanically combined (even if doesnt last liong)
Broadest Interpretation
- BRI is given by examiner
- sets boundaries for claims and confirms if part of statutory categories
- Helps show utility of the claimed invention
Inelligible Under 101
Transistory Forms of signal transmisson Humans legal copntracts computer programs companies data printer matter
Tax Strategy
Explicitly banned by the AIA unless something like turbo tax
Comprising
- Transitional Phrase
- inclusive and does not close off any additional elements
Consisting Of
- Transitional Phrase
- Excludes anything not listed in the claim
Consisting Essentially Of
- Transitional Phrase
- limits scope of claim to specified materials or steps
New Uses of Known Componds
New function or unknown property in prior art is not patentable
something old does not become patentable with discovery of new property
Product by Process Claims
- Patentability are based on results only
Abandoned Applications
Can still be used as prior art when refrenced in disclosure of another patent, publication, or voluntary disclosure 37 CFR 1.139
Printed Publications Prior Art
- Considered prior art if avail to public
- still prior if restricted to if made avail to those skilled in art
- oral speech can be if speech transcribed and distributed
Commercial Exploitation
Premature commercial exploitation of completed or semi completed invention
-prior art if commercial exploitation is determined
Factors for Commercial exploitation
- Preparation of various commercial documents
- Preparation of price lists
- Demonstration of models or prototypes
- Use of invention where admission fee is charged
- advertising in publicity releases
Experimental Activity by Sup. Court
- Testing had to be somewhat public
- Testing needed to be a long period of time
- Testing conducted under supervision and control of inventor
- Inventor regularly inspected the invention during period
- extent of testing actually done
- extent of any obligations or limitations placed on user
- length of time and number of cases
- explicit or implicit obligations placed on user to provide feedback
- Disclosures made by inventor to point out defficiences
- effort on inventor to samples
- doctor/patient relationship where doctor carried out experiment
Extra Experiment Req
Inventor maintained sufficient control
Developmental testing was allowed
Marking Testing not allowed
Experimental activity in context of design
Inventorship
- Contributed to conception of invention
- not required to reduce invention to practice
Conception of Invention
Complete performance of the mental part of inventive act
Joint Inventorship
- Same rules of inventorship
- Must be some kind of obligation in place
Reduction to Practice (two types)
Two Types:
- Actual Reduction - invention sufficiently tested to demo that it will work as intended
- Constructive Reduction- device is simple and purpose is obvious the construction alone is enough to show workability
Reasonable Diligence
- Reasonable diligence was done during the work
- Period must be accounted for via affirmative acts or acceptable excuses
- without diligence you can lose applciation
35 USC 103 Obviousness
what is and steps
Cant make something obvious based on prior art
Steps for determining obviousness
1. Determination of scope and contents of prior art
2. Ascertain differences between prior art and claims
3. resolve the level of ordinary skill in relevant art
4. evaluate the evidence of secondary considerations
103 Tennants Examiner Follows
- Claimed invention considered as a whole
- References must be considered as a whole and suggest desirability and obviousness of making the combination
- references must be viewed without benefit of impermissible hindsight afford by the CI
- Reasonable expectation of success
Factors to Determine Level of Ordinary Skill
- Education level of inventor
- type of problems encountered in the art
- prior art solutions to those problems
- rapididty with which innovations are made
sophistication of tech
educational level of active workers in field
Joint Research Agreement
- AIA 35 USC 102 (b)(2)(C)
- SM disclosed was developed and CI was made by one or more parties to a Joint agreement before eff. filing date
- CI was made as a result of activities undertaken within scope of agreement
- Application for patent for CI discloses names of parties to the joint research agreement
AIA 35 USC 103
- Focuses on connection btwn prior art and CI
- Focus of prior art before eff. filing date
Specification Requirement
35 USC 112 (a)
- Written description of the invention (reasonably clarity)
- Enablement
- Best Mode
Issues usually occur when claims are changed to either broaden or narrow the limitations
If Issue with Written Description
Submit admendment to clarify claim or add new claim
new claim must be supported by description of CI
Enablement Requirement
Requires that specification describe how to make and use CI
Defined by the claims of the application
Ensures invention is communicated to the public in meaningful way
need at least one method
can be working or prophetic
Best Mode Requirement
Safe guard from people keeping best mode for themselves
disclosure that includes the best mode is enough
updating best mode is not required
Two Requirements for Claims Under 35 USC 112
Claims must set forth the SM that applicants regard as their claimed invention
Claims must particularly point out and distinctly define the mets and bounds of SM to be protected
Markush Group
Alternative expressions if no uncertainty or ambiguity present
members being selected from the group consisting of A,B, and C.
Negative Limitiations
Nothing wrong with negative limitations
Prolix
When examiner rejects a claim for being to wordy
contain long ecitations or unimportant details
Multiplicity
Rejection when unreasonable number of claims present
Use Claim
Attempts to claim a process without setting orth any steps invloved in the process
Omnibus Claim
Rejection under 112 (b) when device shown and described without specifics
Trademarks/Trade Names
Presence of these in claim is not techinially improper under 35 USC 112 (b)
if used in claim as a limitation to ID or describe material then claim does not comply
35 USC 112 (f) Limit
Invoked if Claim:
- limitations use the phrase “means for” or “step for”
- Means for or step for must be miodified by functional language
- phrases means/steps for must not be modified by structure, material or acts for achieving specified function
Definite Claim
Applicant clearly and concisely defines the metes and bounds of the CI
Ensures those trained in art understand application
Indefinite Claim
Claim language is to ambiguous for those trained in art to understand what is being claimed as the invention
Up to applicant to correct via an amendment
Anticipation of Claim
Claims are considered anticipated when each and every element is taught in a prior art reference
Court Defines Utility
Practical Utility
Specific Utility
Substantial Utility
For all utility, device does not need to be operable or commercial ready
