MPEP 2100

Question 1

Utility requirement
35 USC 101

Answer 1

An invention must have a useful purpose in order to be patentable.
See MPEP 2106.01

Question 2

How can you demonstrate utility in your patent application?
35 USC 101

Answer 2

Provide a clear and concise description of the invention and its useful purpose. Also, provide any supporting evidence that you have such as test results, expert opinions, or commercial success.

Question 3

Novelty requirement
35 USC 102

Answer 3

An invention must be new and not known or used by others before the effective filing date of the patent application.
See MPEP 2106.02

An invention is considered to be new if it is not:
1. Described in a printed publication
2. Disclosed in a public presentation
3. Know or used by others before the effective filing date of the patent application

An invention is not patentable if it was known or used by others before the effective filing date of the patent application.

Question 4

Based on the novelty requirement, what is prior art?
35 USC 102

Answer 4

Prior art is any information that was publicly disclosed before the effective filing date of the patent application. Prior art can include:
1. Patents and published patent applications
2. Published articles and books
3. Public presentations and demonstrations
4. Products and process that were on sale or in use

Question 5

How is prior art determined?
35 USC 102

Answer 5

The USPTO searches for prior art during the patent examination process. The USPTO uses a variety of sources to find prior art, including:
1. Patent databases
2. Scientific and technical journals
3. Publicly available websites
4. Commercial catalogs and brochures

Question 6

How can you overcome a novelty rejection?
35 USC 102

Answer 6

If the USPTO rejects your patent application based on a novelty rejection, you may be able to overcome the rejection by:
1. Amending the claims to narrow the scope of the invention;
2. Providing evidence that the prior art was not publicly disclosed before the effective filing date of your patent application;
3. Providing evidence that the prior art does not disclose all of the elements of the claimed invention.

Question 7

Non-obvious requirement
35 USC 103

Answer 7

An invention must be different from the prior art in a way that would not be obvious to a person having ordinary skill in the art.
See MPEP 2106.03

Question 8

The USPTO uses a number of factors to determine whether an invention is obvious, including:

Answer 8

1. The scope and content of the prior art.
2. The differences between the claimed invention and the prior art.
3. The level of ordinary skill in the art.
4. Any objective evidence of non-obviousness, such as commercial success or long-felt need.

The non-obviousness requirement is intended to ensure that patents are only granted for inventions that represent a significant advance over the prior art. This helps to prevent people from patenting inventions that are simply minor improvements on existing inventions.

The USPTO uses a fact-specific analysis to determine whether an invention is non-obvious. This means that there is no bright-line test for non-obviousness.

Question 9

Disclosure requirement
35 USC 112
MPEP 2106.04

Answer 9

The patent application must describe the invention in enough detail so that someone skilled in the art could make and use the invention without undue experimentation.

The disclosure requirement is important because it ensures that the public has access necessary to make and use the invention after the patent expires.

Question 10

Claim requirement
35 USC 112
MPEP2107

Answer 10

The patent application must include one or more claims that define the invention and define the scope of the patent protection that is being sought.

The claim requirement is important because it defines the scope of the patent protection that is granted. The claims must be clear, concise, and distinct.

Question 11

Claim interpretation
MPEP 2111

Answer 11

the process of determining the meaning of the claims in a patent application. The claims define the scope of the patent protection that is being granted. If there is any ambiguity in the claim language, the USPTO will interpret the claims in a way that is consistent with the disclosure in the patent application and the prior art.

The USPTO uses a number of factors to interpret claims, including:
1. The plain meaning of the claim language
2. The context in which the claim language is used
3. The specification of the patent application
4. The prior art

Question 12

35 USC 101

Answer 12

requirements to meet 35 USC 101:
1. Whoever invents or discovers an eligible invention may obtain only one patent therefor.
2. A claimed invention must fall within one of four eligible categories of invention: process, machine, manufacture, or composition of matter or any new and useful improvement thereof, and must not be wholly directed to subject matter encompassing a judicially recognized exception of Laws of nature, natural phenomena, or abstract ideas.
3. a claimed invention must be useful or have a utility that is specific, substantial and credible.

Subject matter eligible for patent protection.
An invention is patentable only if it has a useful purpose. An invention may be useful for any purpose including industrial, scientific, or ornamental purposes.

Question 13

What is not patent eligible

Answer 13

1. laws of nature
2. physical phenomenon
3. abstract ideas
4. human organisms (embryos, etc.)
5. tax strategies exclusions
6. Nonstatutory Subject Matter:
   
   1. legal contractual agreement between to
      parties,
   2. a computer program per se
   3. a company,
   4. a mere arrangement of printed matter,
   5. data per se,
   6. transitory forms of signal transmission

Question 14

Diamond v. Chakrabarty

Answer 14

This case held that microorganisms produced by genetic engineering are not excluded from patent protection my 35 USC 101. Only human-made inventions are patentable. MPEP 2105.

Question 15

Myriad case

Answer 15

Myriad genetics case said that isolated DNA is not patent eligible because isolated DNA exists in nature. However, cDNA is patent eligible as long as it is not identical to DNA. cDNA is man made.

Question 16

In re Roslin Institute

Answer 16

This has to do with Dolly the sheep.
Discoveries that possess markedly different characteristics from any found in nature are eligible for patent protection. Despite acknowledging that the method used to create the claimed clones “constituted a breakthrough in scientific discovery,” the court held the claims ineligible because “Dolly herself is an exact genetic replica of another sheep and does not possess “markedly different characteristics from any farm animals found in nature.”” (Roslin)

Question 17

What is Tax Strategy Exclusion (AIA)

Answer 17

The America Invents Act specifically excludes patentability “any strategy for reducing, avoiding, or deferring tax liability” unless it is a method, apparatus, technology, computer program product, or system either;
1. that is used solely for preparing a tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or
2. used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy.

This exclusion applies to all patent applications pending or filed on or after, and to any patent that is issued on or after, September 16, 2011.

see MPEP 2124.01 Tax Strategies Deemed Within the Prior Art

Question 18

What is a wholly inoperative inventions (“incredible” utility)?

Answer 18

An invention that is inoperative (i.e., it does not operate to produce the results claimed by the patent applicant) is not a “useful” invention in the meaning of the patent law.
Note: if the invention performs crudely, then it is patentable, even if its inferior. If it works at all, it has utility.

Question 19

What is the relationship between 112(a) and 101?

Answer 19

Failure of 101 –> also failure of 112 (lack of enablement)
A deficiency under 35 USC 101 also creates a deficiency under 35 USC 112(a). (“If such compositions are in fact useless, appellant’s specification cannot have taught how to use them”.).

Question 20

35 USC 102

Answer 20

Prior Art
An invention is not patentable if it was known or used by others begore the effective filing date of the patent application.

Question 21

35 USC 103

Answer 21

Non-obviousness
An invention is not patentable if it would have been obvious to a person having ordinary skill int he art at the time the invention was made.

Question 22

37 CFR 1.111

Answer 22

Application disclosure

Question 23

37 CFR 1.132

Answer 23

Definition of claim

Question 24

37 CFR 1.133

Answer 24

Claim interpretation

Question 25

Transitional phrase “comprising”

Answer 25

The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps.

Question 26

transitional phrase “consisting of”

Answer 26

The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim.

Question 27

transitional phrase “consisting essentially of”

Answer 27

The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.

Question 28

Jepson claim

Answer 28

The preamble is not given the effect of a limitation unless it is a Jepson claim. Jepson claim states, “wherein the improvement comprises,” or “characterized by”.

Question 29

Product-by-Process Claims

Answer 29

MPEP 2113

Question 30

What is Nonanalogous Art?

Answer 30

“Arguments that the alleged aticipatory prior art is “nonanalogous art” or “teaches away from the invention” or is not recognized as solving the problem solved by the claimed invention, are not “germane” to a rejection under section 102.” MPEP 2131.05

Question 31

What are the objective indicia of Non-obviousness (steps to a determination of obviousness)?

Answer 31

(A) Determining the scope and content of the
prior art;
(B) Ascertaining the differences between the
claimed invention and the prior art;
(C) Resolving the level of ordinary skill in the
pertinent art; and
(D) Evaluate the evidence of secondary considerations (such as: unexpected results, commercial success, long-felt need, failure of others, copying by others, licensing, and skepticism of experts are relevant to the issues of obviousness and must be considered in very case in which they are present.)

Question 32

When applying the law 35 USC 103, the following principles of patent law must be adhered to:

Answer 32

(A) The claimed invention must be considered as a whole;
(B0 The references must be considered as a whole and must suggest the desirability and thus the obviousness of making the combination;
(C) The references must be viewed without the benefit of impermissible hindsight vision afforded by the claimed invention; and
(D) Reasonable expectation of success is the standard with which obviousness is determined.

Question 33

The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the relevant time. Factors that may be considered in determining the level of ordinary skill in the art may include:

Answer 33

The person of ordinary skill in the art is a
hypothetical person who is presumed to have known the relevant art at the relevant time. Factors that may be considered in determining the level of ordinary skill in the art may include:
(1) “type of problems encountered in the art;”
(2) “prior art solutions to those problems;”
(3) “rapidity with which innovations are made;” (4) “sophistication of the technology; and”
(5) “educational level of active workers in the field.”

Question 34

What are the rationales that may support a conclusion of obviousness (MPEP 2143):

Answer 34

(A) Combining prior art elements according to
known methods to yield predictable results;
(B) Simple substitution of one known element
for another to obtain predictable results;
(C) Use of known technique to improve similar
devices (methods, or products) in the same way;
(D) Applying a known technique to a known
device (method, or product) ready for improvement to yield predictable results;
(E) “Obvious to try” – choosing from a finite
number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may
prompt variations of it for use in either the same
field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation
in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

See MPEP 2143

Question 35

A. Combining prior art elements according to known methods to yield predictable results. MPEP 2143

Answer 35

To reject a claim based on this rational, Examiner must resolve the Graham factual inquiries. Then, Examiner must articulate the following:
1. a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
2. a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
3. a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
4. whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

Question 36

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.

Answer 36

Combining prior art elements according to
known methods to yield predictable results.

The claimed invention was a paving machine which combined several well-known elements onto a single chassis. The Court concluded that the convenience of putting the burner together with the other elements in once machine though perhaps a matter of great convenience, did not produce a new or different function and that, to those skilled in the art, the use of the old elements in combination would have been obvious.

Question 37

Ruiz v. AB Chance, Co.

Answer 37

Combining prior art elements according to
known methods to yield predictable results

The claimed invention was direct to a system which employs a screw anchor for underpinning existing foundations and a metal bracket to transfer the building load onto the screw anchor. The prior art (Fuller) used screw anchors for underpinning existing structural foundations. Fuller used a concrete haunch to transfer the load of the foundation to the screw anchor. The nature of the problem to be solved - underpinning unstable foundations - as well as the need to connect the member to the foundation to accomplish this goal, would have led one of ordinary skill in the art to choose an appropriate load-bearing member and a compatible attachment, Therefore, it would have been obvious to use a metal bracket (as shown in Gregory) in combination with the screw anchor (as shown in Fuller) to underpin unstable foundations.

Question 38

In re Omeprazole Patent Litigation

Answer 38

Combining prior art elements according to
known methods to yield predictable results

The case is one in which the claims in question were found to be nonobvious in the context of an argument to combine prior art elements. The district court reasoned that a person of ordinary skill in the art would have had no reason to include a subcoating in an omeprazole pill formulation. The Federal Circuit affirmed. Even through subcoating for enteric drug formulation were known, and there was no evidence of undue technical hurdles or lack of a reasonable expectation of success, the formulation was nevertheless not obvious because the flaws in the prior art formulation that had prompted the modification had not been recognized. Thus, there would have been no reason to modify the initial formulation, even though the modification could have been done.

Question 39

Crocs, Inc. v. U.S. International Trade Commission

Answer 39

Combining prior art elements according to
known methods to yield predictable results

Found to be nonobvious over a combination or prior art references. The Federal Circuit pointed out that this combination yielded more than predictable results. Prior art, Aguerre, had taught that friction between the base section and the strap was a problem rather than an advantage, and had suggested the use of nylon washers to reduce friction. Thus the Federal Circuit state that even if all elements of the claimed invention had been taught by the prior art, the claims wound not have been obvious because the combination yielded more than predictable results.

Question 40

Sundance, Inc. v. DeMonte Fabricating, Ltd.

Answer 40

Combining prior art elements according to
known methods to yield predictable results

This case involved a segmented and mechanized cover for trucks, swimming pools, or other structures. The claim was found to be obvious over the prior art applied. The Federal Circuit noted that the segmentation aspect of the first reference and the mechanization function of the second perform in the same way after combination as they had before. The Federal Circuit further observed that a person of ordinary skill in the art would have expected that adding replaceable segments as taught by the first reference to the mechanized cover of the other would result in a cover that maintained the advantageous properties of both of the prior art covers.
Thus, the Sundance case points out that a hallmark of a proper obviousness rejection based on combining known prior art elements is that one of ordinary skill in the art would reasonably have expected the elements to maintain their respective properties or functions after they have been combined.

Question 41

Ecolab, Inc. v. FMC Corp.

Answer 41

Combining prior art elements according to
known methods to yield predictable results

In this case, an “apparent reason to combine” in conjunction with technical ability to optimize led to the conclusion that the claimed invention would have been obvious. The invention in question was a method of treating meat to reduce the incidence of pathogens, by spraying the meat with an antibacterial solution under specified conditions. The parties did not dispute that a single prior art reference had taught all of the elements of the claimed invention, except for the pressure limitation of at least 50 psi.

Question 42

Wyers v. Master Lock Co.

Answer 42

Combining prior art elements according to
known methods to yield predictable results

In this case, the Federal Circuit held that the claimed barbell-shaped hitch-pin locks used to secure trailers to vehicles were obvious. The court explained that the Supreme Court’s decision in KSR “directs it to construe the scope of analogous art broadly. Id. at XX. For these reasons, the court found that Master Lock’s asserted references were analogous prior art, and therefore relevant to the obviousness inquiry. The court concluded that the constituent elements were being employed in accordance with their recognized functions, and would have predictably retained their respective functions when combined as suggested by Master Lock.

Question 43

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.

Answer 43

Combining prior art elements according to
known methods to yield predictable results

In this case, the claim was directed to a polyaxial pedicle screw used in spinal surgeries that included a compression member for pressing a screw head against a receiver member. A prior art reference (Puno) disclosed all of the elements of the claim except for the compression member. The Federal Circuit determined that Puno teaches away form the proposed combination such that a person of ordinary skill would have been deterred from combining the references as proposed. Secondary considerations evaluated by the Federal Circuit relating to failure by others and copying also supported the view that the combination would not have been obvious at the time of the invention.

Question 44

Simple Substitution of One Known Element for
Another To Obtain Predictable Results

Answer 44

Simple Substitution of One Known Element for
Another To Obtain Predictable Results

To reject a claim based on this rationale, Office
personnel must resolve the Graham factual
inquiries. Then, Office personnel must articulate the
following:
(1) a finding that the prior art contained a device
(method, product, etc.) which differed from the
claimed device by the substitution of some
components (step, element, etc.) with other
components;
(2) a finding that the substituted components
and their functions were known in the art;
(3) a finding that one of ordinary skill in the art
could have substituted one known element for another, and the results of the substitution would have been predictable; and
(4) whatever additional findings based on the
Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

Question 45

C. Use of Known Technique To Improve Similar
Devices (Methods, or Products) in the Same Way

Answer 45

C. Use of Known Technique To Improve Similar
Devices (Methods, or Products) in the Same Way

To reject a claim based on this rationale, Office
personnel must resolve the Graham factual
inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a “base”
device (method, or product) upon which the claimed invention can be seen as an “improvement;”
(2) a finding that the prior art contained a
“comparable” device (method, or product that is not the same as the base device) that has been improved in the same way as the claimed invention;
(3) a finding that one of ordinary skill in the art
could have applied the known “improvement”
technique in the same way to the “base” device
(method, or product) and the results would have been predictable to one of ordinary skill in the art; and
(4) whatever additional findings based on the
Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.

The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations.

One of ordinary skill in the art would have been
capable of applying this known method of
enhancement to a “base” device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. The Supreme Court in KSR noted that if the actual application of the technique would have been beyond the skill of one of ordinary skill in the art, then using the technique would not have been obvious. KSR, 550 U.S. at 417, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

Question 46

D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results

Answer 46

D. Applying a Known Technique to a Known Device (Method, or Product) Ready for Improvement To Yield Predictable Results

To reject a claim based on this rationale, Office
personnel must resolve the Graham factual
inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art contained a “base”
device (method, or product) upon which the claimed invention can be seen as an “improvement;”
(2) a finding that the prior art contained a known
technique that is applicable to the base device
(method, or product);
(3) a finding that one of ordinary skill in the art
would have recognized that applying the known technique would have yielded predictable results
and resulted in an improved system; and
(4) whatever additional findings based on the
Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art. If any of these findings
cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.

Question 47

Factors that may be considered in determining the level of ordinary skill in the are include:

Answer 47

1. the 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.
   see MPEP 2141.03