MPEP 2100 Flashcards
Non-Patentable Subject Matter
- Laws of nature
- Physical Phenomena
- Abstract Ideas
- Human Organisms (AIA 33)
Patentable Subject matter
- Product
- Process
- Product-by-Process
- Living Subject Matter (human ingenuity)
AIA Tax Strategies
AiA 14 limits what can be used to differentiate claimed invention from prior art under 102 or 103
Strategy for reducing, avoiding, or deferring tax liability is insufficient to differentiate a claimed invention from the prior art.
Claim Interpretation: General
Broadest Reasonable Interpretation
- Consistent with the specification
- Consistent with what those skilled in the art would determine
Claim Interpretation: Effects of Preamble
The preamble does not always limit a claim.
Case-by-case basis
Claim Interpretation: Translational Phrases
Non-Exclusive:
- Comprising
- Including
- Characterized by
Exclusive:
- Consisting of
- Consisting essentially of
Inherency Rejections
Inherent features can be relied upon in as 102 Anticipation or a 103 Obviousness rejection whether they are implicit, express, or inherent in a prior art disclosure
Old inventions do not become patentable simply because of a newly discovered inherent feature.
Product-by-Process Claims
Product must be similar to prior art to be unpatentable and not the process used to achieve the product.
Apparatus and Article Claims
Cover the device itself and not what the device does
The structure of the apparatus must be different from the prior art to be patentable.
Prior Art: Enablement
Prior art is assumed to be Operable/Enabling.
Burden is on applicant to prove prior art is inoperable.
Prior Art: Compounds and Compositions
Enabling prior art must allow one skilled in the art to make/synthesize the invention from the disclosure.
Prior Art: Plant Genetics
A person skilled in the art must be able to grow and cultivate the plant based on the prior art
Prior Art: Apparatus and Articles
A picture may be prior art if it shows all of the claim structural features, including how they are put together
Prior Art: Patents
Everything that is disclosed in a patent is considered prior art, even what is not claimed, alternate embodiments, and non-preferred embodiments.
Prior Art: “Secret” Patents
Can be used as prior art as of the date they are made available to the public.
Prior Art: 102(d)
The grant date is used for a 102(d) rejection.
Prior Art: Foreign Patents
Available as prior art when they are granted their patent rights, not the application filing date
Prior Art: Abandoned Applications and Provisional Applications
Prior art as of the day they become available to the public.
Examples:
- When voluntarily disclosed
- When in publication
- When referenced in another patent
Prior Art: Drawings
Give rise to a 102 Anticipation rejection.
Can be used as prior art if they show all the claimed structural features and how they are put together.
Proportions in a drawing are not evidence of actual proportions when drawings are not to scale, and measurements of a drawing cannot be used against an invention if there is no scale provided.
Prior Art: “Printed Publication”
A reference is a “printed publication” if it is accessible to the public.
Accessibility to persons skilled in the art is key.
- Web pages and online content
- Thesis placed in university library, indexed and shelved
- Orally presented papers if written copies are available without restriction
- Publicly displayed documents if only displayed for a few days
Factors for Public Accessibility
- Length of time displayed
- Target audience expertise
- Expectation that the material would not be copied
- Ease at which the material could have been copied
Prior Art: Admissions
Admissions on the record as a reference of prior art can be relied upon for a 102 or 103 rejection, even if the reference would not have been considered prior art otherwise.
Prior Art: IDS
A reference on an IDS is not admitted prior art.
Exception to the Rule that the Critical Reference Date Must Precede the Filing Date
If a reference shows a universal fact, the date of the reference does not need to be prior to the effective date to be used as prior art.
Examples:
- Scientific principles
- Material properties
- Material characteristics
Jepson Claims
Used when the case of an improvement.
- Preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known
- Phrase such as “wherein the improvement comprises”
- Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
Prior Art: Jepson Preamble
Implied admission of prior art and can be used to avoid a double patenting rejection.
If the preamble is the work of the applicant, it can’t be used against him.
Anticipation under 102(a), (b), and (e): General Rule
Generally, to anticipate a claim, only one reference may be used, and it must teach every element of the claim.
Anticipation under 102(a), (b), and (e): Exceptions
An anticipatory rejection using multiple references can be okay if the additional references are used to:
- Prove the primary reference contains an “enabled disclosure”
- Explain the meaning of a term used in the primary reference
- Show that a characteristic not disclosed in the reference is inherent
Anticipation under 102(a), (b), and (e): Genus-Species
A species can anticipate a genus.
The reference need only disclose one species if multiple are listed to anticipate the claim.
Anticipation under 102(a), (b), and (e): Range Anticipation
Single Point: For a range to be anticipated by a reference, only a single point within the claimed range need to be disclosed in the reference.
Overlapping Reference: Usually considered anticipation if the claimed ranges overlap (not always the case)
Nearly the Same Range: There is no anticipation if the range is “nearly the same”
Not Used in Anticipation Rejections
- Secondary Considerations
- Nonanalogous Art
- Disparaging Art
- Not recognized as solving the problem
- Teaching away
Obviousness: Prima Facie
Examiner must explicitly support his case in the analysis
Examples:
- TSM in the prior art
- Obvious to Try
- Substitution of one known element for another to obtain a predictable result
- Applying a known technique to a device known to be ready for an improvement to yield predictably
- Use of a known technique to improve similar devices in the same way
- Combining prior art elements according to known methods to yield predictable results
Obviousness: Rationale
A 103 Rejection must be supported by
- Legal precedent
- Scientific Principles
- Logic
- Reasoning from common knowledge in the art
- A reference or art-recognized equivalents
Obviousness: Graham Factors
1) Determine the scope and content of the prior art
2) Ascertain the differences between the prior art and the claims in issue
3) Determine the level of ordinary skill in the pertinent art
4) Evaluate any evidence of secondary consideration
Obviousness: Applicant’s Rebuttal
Applicant can submit evidence to rebut examiner’s prima facie obviousness.
Example: Secondary considerations such as
- Commercial Success
- Long Felt but unresolved need
- Failure of others
35 USC 112(a) Rejection
Generally a question of whether the subject-matter of a claim is supported by or conforms to the disclosure of an application as filed.
Typical Circumstances:
- Amendment made affecting a claim
- Addition of a new claim
New Matter
Added to disclosure: Examiner should
- Object to the introduction of under 35 USC 132 or 251
- Require applicant to cancel the new matter
Added to claims: Examiner should
- Reject the claims under 35 USC 112(a)
Enablement Rejection
The examiner has the initial burden to establish a reasonable basis to question the enablement provided for the claimed invention.
35 USC 112(b): Numerical Ranges and Amounts Limitations
“Effective Amount”
- may or may not be identifiable
- Proper test is whether or not one skilled in the art could determine specific values for the amount based on the disclosure
Equivalence
Arises when an element in prior art is equivalent to the corresponding element disclosed in the specification.
The examiner can find a prior art element which performs the function specified in the claim
The examiner should assume the prior art element is an equivalent.
Doctrine of Equivalents
Arises in the context of an infringement action.
Where a product or process does not specifically infringe a protected invention, then item may still be found to infringe through the Doctrine of Equivalents
