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KC Patent Bar > M.P.E.P. 2100 Patentability > Flashcards

M.P.E.P. 2100 Patentability Flashcards

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1
Q

Patentability

A
  1. Subject Matter
  2. Useful
  3. New
  4. Non-Obvious
  5. Adequately described.

**No requirement to be an advancement, just different.

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2
Q

What is not patentable?

A
  1. Laws of nature
  2. Physical phenomena
  3. Abstract Ideas
  4. Illegal purposes
  5. Atomic Weapons
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3
Q

What is patentable?

A

Non-naturally occuring:

  1. Manufacture (production of an article)
  2. Composition of Matter (combine two or more substances)
  3. Process
  4. Machine (physical embodiment
  5. Any new and useful improvement
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4
Q

Is living matter patentable?

A

Yes, microorganisms produced by genetic engineering are NOT excluded from patent protection.

AIA says that HUMAN ORGANISMS are NOT patentable.

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5
Q

Is Computer-Related Inventions Patentable?

A

Satisfy the Machine or Transformation test to be patentable. (only a clue)

Not the only way to demonstrate patent eligibility.

  1. Determine what the program does
  2. Determine how the compute is to be configured to provide the functionality.
  3. If applicable, determine the relationship of the programmed computer to other subject matter outside the compute that constitutes the invention (machine, device, materials or process steps other than those of the program)

No connection to machine, etc., then abstract idea.

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6
Q

Factors to Be Considered in Deciding Whether Claim Is an Unpatentable Abstract Idea

A
  1. Whether a Method involves or is executed by a Particular Machine or Apparatus.
  2. Whether the machine or apparatus implements the steps of the method.
  3. Whether its involvement is extrasolution activity or a Field-of-use.
  4. Whether performance of the Claimed method results in or otherwise involves a Transformation
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7
Q

Abstract Idea Analysis: Whether a method involves or is executed by a Particular Machine or Apparatus

A

Computer needs to be integral with the method, Weighs towards patentability.

Merely an object, weighs against.
- Nominally

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8
Q

Abstract Idea Analysis: Whether the machine or apparatus implements the steps of the method

A

The must be a connection

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9
Q

Abstract Idea Analysis: Whether its involvement is extrasolution Activity or a Field of use

A

The extent to which or how the machine or apparatus imposes meaningful limits on the execution of the claimed method steps.

Mere an object, weighs against.

- Nominally
- insignificant
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10
Q

Abstract Idea Analysis: Whether performance of the claimed method results in or otherwise involves a transformation.

A

Have you affected or changed the nature of an articles, weighs towards patentable

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11
Q

Intend Use or Field of Use Statement

A

Claim language that simply specifies an intended use or filed of use for the invention generally will not limit the scope of a claim, particularly when only presented in the claim preamble.

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12
Q

Tax Strategy Exclusion

A

Reducing, avoiding, or deferring tax liability is not a patentable method UNLESS a method, apparatus, technology, computer program product or system:
1. Solely for preparing tax filing.
OR
2. Used solely for financial management (severable from tax strategy)

Any on or after, September 16, 2011.

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13
Q

Utility/Usefulness

A

Is the claim invention useful? Yes or No

Any reasonable use that an applicant has identified for the invention that can be viewed as providing a public benefit should be accepted as sufficient, at least with regard to defining a specific utility.

An asserted Utility must be specific, not general.

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14
Q

Incredible Utility

A

An invention that is “inoperative” is not useful.

Does not operate to produce the results claimed by the patent applicant.

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15
Q

Claim Interpretation

A

Broadest Reasonable Interpretation.

The words of a claim must be given their “plain meaning” unless they are defined in the specification.

Plain meaning is the meaning given to the term by those of ordinary skill in the art.

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16
Q

Weight of the Preamble

A

Not much unless it breathes life and meaning into the claims.

Jepson claims can lead to a limitation.

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17
Q

What about new uses of known compounds?

A

The claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.
- must be novel and non-obvious
The discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a process of using.

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18
Q

How is a composition claim rejected?

A

If the composition is physically the same, it must have the same properties.

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19
Q

Transitional Phrases

A

Consisting of - closed

Comprising of - open

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20
Q

103 Rejections and Use of Inoperative Prior Art

A

Something that does not work can be used towards obvious.

A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments.

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21
Q

Factual References Antedating the Filing Date

A

Reference which do not qualify as prior art because they postdate the claimed invention may still be relied upon to show the level of ordinary skill in the art at around the time the invention was made.

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22
Q

When is a publication going to be prior art?

A

As of when it could have been accessed by at least one member of the general public.

Available to be accessed.

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23
Q

Admissions as Prior Art

A

If applicant states that something is prior art, it is taken as being available as prior art against the claims.

Can be used as obviousness rejection.

Jepson claims - “wherein the improvement further comprises” - everything before that is admitted as prior art.

Better to start broader anyways.

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24
Q

Factors Indicative of Commercial Exploitation

A
  1. Preparation of various contemporaneous “commercial” documents (order, invoices)
  2. Preparation of price lists
  3. Display of samples to prospective customers;
  4. Display of samples to prospective customers
  5. Demostration of models or prototypes, especially at trade conventions
  6. Use of an invention where an admission fee is charged;
    AND
  7. Advertising in publicity releases, brochure, and various periodicals.

**Suggest that it is not an experimental use
EVEN IF:
1. Price estimates
2. No commercial production runs have been made
3. Never sold the invention.

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25
Q

Factors Indicative of Experimental Purpose Public Use Exception

A
  1. Nature of the invention calls for public testing;
  2. Testing had to be for a substantial period of time;
  3. Testing was conducted under supervision and control
  4. The inventor regularly inspected the invention during the period of experimentation.
26
Q

Experimentation and Degree of Supervision and Control

Must Know

A
  1. The inventor must maintain sufficient control and supervision over the invention during testing by third parties.
  2. Development testing is permitted;
  3. Market testing is not permitted;
    AND
  4. Experimental activity in the context of design applications.
27
Q

Joint Inventorship Knowledge Requirement

A

At least one person needs to know their work is being combined with other.

All are inventors.

28
Q

What if two separate inventors conceived on the same day?

A

First to file wins.

29
Q

Obviousness “Graham Factual Inquiries”

A
  1. Determine the scope and contents of prior art;
  2. Ascertain the difference between the prior art and the claims in issue;
  3. Resolve the level of ordinary skill in the pertinent art;
    AND
  4. Evaluate the evidence of secondary considerations (objective evidence)

After this turn to KSR.

30
Q

Objective Evidence

A
  1. Unexpected results
  2. Commercial success (weaker)
  3. Long-felt need (better than others)
  4. Failure of others
  5. Copying of others (weak unless no-one believed in it)
  6. Licensing
    AND
  7. Skepticism of experts are relevant.

MUST BE CONSIDERED

31
Q

Rationales That May Support a Conclusion of Obviousness (KSR)

A
  1. Combining prior art elements according to known methods to yield predictable results;
  2. Simple substitution of one known element for another to obtain predictable results;
  3. Use of known technique to improve similar devices (methods or products) in the same way;
  4. Applying a known technique to a known device (method or product) ready for improvement to yield predictable results;
  5. “Obvious to try”
  6. Known work in one field of endeavor my 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;
  7. Some TSM (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.
32
Q

KSR Rationale of Obviousness: Combining Prior Art Elements According to Known Methods to Yield Predictable Results

A

After Graham Factors the Office personnel must articulate the following:
1. A finding that the prior art included each element claimed with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements.
2. A finding that PHOSITA could have combined the elements as claimed by known methods, each element merely performs the same function as it does separately;
3. A find that PHOSITA would have recognized that the results of the combination were predictable;
AND
4. Explain a conclusion of obviousness and other reasoning.

33
Q

KSR Rationale of Obviousness: Simple Substitution of an Element Yielding Predictable

A

After Graham Factors the Office personnel must articulate the following:
1. A finding that the prior art contained a device which differed from the claimed device by the substitution of some components with other components;
2. A finding that the substituted components and their functions were known in the art;
3. A finding that PHOSITA could have substituted one known element for another, and the results of the substitution would have been predictable.
AND
4. Explain conclusion of Obviousness and other reasoning.

Lead Compounds: Chemical Compound Starting Point
Analysis:
1. How did they get to the starting point of that compound?
2. What did they change to the starting compound and what was the result?

34
Q

KSR Rationale of Obviousness: Use of Known Technique to Improve Similar Devices in the Same Way

A

After Graham Factors the Office personnel must articulate the following:
1. A finding that the prior art contained a “base” device upon which the claimed invention can be seen as an “improvement”;
2. A finding that the prior art contained a “comparable” device that has been improved in the same way as the claimed invention;
3. A finding that PHOSITA could have applied the know improvement technique in the same way to the “base” device as the results would have been predictable to PHOSITA;
AND
4. Explain conclusion of Obviousness and other reasoning.

35
Q

KSR Rationale of Obviousness: Known Technique Applied to Known Device Ready for Improvement to Yield Predictable Results

A

After Graham Factors the Office personnel must articulate the following:
1. A finding that the prior art contained a “base” device 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;
3. A finding that PHOSITA would have recognized that applying the known technique would have yielded predictable results and resulted in an improved system;
AND
4. Explain conclusion of obviousness and other reasoning.

36
Q

KSR Rationale of Obviousness: Obvious to Try

A
  • Choosing from a finite number (a small set of possiblities) of identified, predictable solutions, with a reasonable expectation of success;

After Graham Factors the Office personnel must articulate the following:
1. A finding that at the time of the invention, there had been a recognized problem or need in the art, which may include a design need or market pressure to solve a problem;
2. A finding that there had been a finite number of identified, predictable potential solutions to the recognized need or problem.
3. A finding that PHOSITA could have pursued the known potential solutions with a reasonable expectation of success;
AND
4. Explain conclusion of obviousness and other reasoning.

May not use here:

  1. Varying things until it works
  2. Where the prior art only gave general guidance.
37
Q

KSR Rationale of Obviousness: Known Variation Used in Other Fields to Yield Predictable Results

A

After Graham Factors the Office personnel must articulate the following:
1. A finding that the scope and content of the prior art, whether in the same field of endeavor as that of the applicant’s invention or a difference field of endeavor, included as similar or analogous device;
2. A finding that there were design incentive or market forces which would have prompted adaptation of the know device;
3. A finding that the differences between the claimed invention and the prior art were encompassed in known variations or in a principle known in the prior art;
4. A finding that PHOSITA, in the view of the identified design incentive or market forces, could have implemented the claimed variation of the prior art, and the claimed variation would have been predictable to PHOSITA;
AND
5. Explain conclusion of obviousness and other reasoning.

38
Q

KSR Rationale of Obviousness: TSM

A

After Graham Factors the Office personnel must articulate the following:
1. A finding that there was some teaching, suggestion, or motivation, either in the references themselves or in the knowledge generally available to PHOSITA to modify the reference or to combine reference teachings;
2. A finding that there was reasonable expectations of success;
AND
3. Explain conclusion of obviousness and other reasoning.

39
Q

Factors to Consider in Determining Level of Ordinary Skill

A
  1. Education level of 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. Education level of active workers in the field.
40
Q

What do you do if you have a KSR rejection of Obvious?

A

Ask for the objective considerations.

Argue unpredictable results.

41
Q

112 Specification Requirements

A
  1. Written Description
  2. Enablement
  3. Best Mode of Carrying Out the Claimed Invention
42
Q

112 Written Description Requirement

A

Must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he o she was in possession of the invention.

Four Corners Analysis

You get concrete not speculative.
-no bootstrapping knowledge of reader

43
Q

Typical Circumstances Where Adequate Written Description Issues Arise

A
  1. Amendment Affecting a Claim
  2. Reliance on Filing Date of Parent Application under USC 120.
  3. Reliance on Priorty Under USC 119.
  4. Support for a Claim Corresponding to a Count in an Interference;
  5. Changes to the Scope of Claims;
    AND
  6. Range Limitations
44
Q

Claimed Subject Matter Not Disclosed in Remainder of Specification

A

The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend to include.

45
Q

112 Enablement Requirement

A

The specification MUST describe how to make and how to use the invention so that others can do it without undue experimentation.

Applies to PHOSITA
- bootstraps knowledge of their.

Don’t need to submit a working example.

As of filing date.

Evaluated against the claimed subject matter.

46
Q

Undue Experimentaion

A

Included but not limited to:
1. The breadth of the claims;
2. The nature of the invention;
3. The state of the prior art;
4. The level of PHOSITA;
5. The level of predictability in the art;
6. The amount of direction provided by the inventor;
7. The existence of working examples;
AND
8. The quantity of experimentation needed to make or use the invention based on the content of the disclosure.

47
Q

Relationship of Predictability of the Art and the Enablement Requirement

A

The scope of the required enablement varies inversely with the degree of predictability involved, but even in unpredictable arts, a disclosure of every operable species is not required.

Inverse Relationship: Predictability - not good
No predictability - good

48
Q

112 Best Mode Requirement

A

The specification shall set forth the best mode contemplated by the inventor of carry out his invention.

Subjective preference that is objectively disclosed.

49
Q

Considerations Relevant to Best Mode

A
  1. Determine what is the invention. (in the claims)
  2. Specific Example is Not Required
  3. Designation as Best Mode is Not Required
  4. Updating Best Mode is Not Required.

35 USC 112 requires a written description, best mode contemplates by inventor, and enablement. Not required to point out which is the best mode and not required to update the best mode, and no example of best mode is required.

50
Q

Relative Terminology That Could Deem a Claim Indefinite

A
  1. “Similar”
  2. “Type”
  3. “Relatively shallow”
  4. “Of the order of”
  5. “Like”
  6. “Substantial portion”
  7. “For instance”
  8. “Or”
51
Q

Relative Terminology

A
  1. “About”
  2. “Essentially”
  3. “Substantially”
52
Q

What about inconsistency between claim and specification?

A

Inconsistency with the specification disclosure or prior art teaching and the claims may make an otherwise definite claim take on an unreasonable degree of uncertainty.

53
Q

Is exemplary claim language allowed in a claim?

A

No

54
Q

What is exemplary claim language?

A
  1. For Example
  2. Such as
  3. Preferably/Predetermined

Leads to indefinite rejections.

55
Q

Omnibus Claim

A

Should be rejected under 112 (b) because it is indefinite in that it fails to point out what is included or excluded by the claim language.

“A device substantially as shown and described”

56
Q

112(f) Mean Plus Funtion

A
  1. “Means for” or “step for” or “non structural term”
  2. Must be modified by functional language;
    AND
  3. Must not be modified by structure, material or acts for achieving the specified function.

If algorithms, they must be fully described with respect to a computer implemented process.
- Flow Charts

57
Q

What is sufficient disclosure of a doctoral thesis?

A

Shelved at a University, indexed only by subject, and cataloged in the library card catalog

58
Q

Can you include broad and narrow ranges in the same claim?

A

No, separate.

59
Q

Terms that may invoke 112(f)

A
  1. “mechanism for”
  2. “module for”
  3. “device for”
  4. “unit for”
  5. “component for”
  6. “element for”
  7. “member for”
  8. “apparatus for”
  9. “machine for”
  10. “system for”
60
Q

Terms that do NOT invoke 112(f)

A
  1. “circuit for”
  2. “detent mechanism”
  3. “digital detector for”
  4. “reciprocating member”
  5. “connector assembly”
  6. “perforation”
  7. “sealingly connected joints”
  8. “eyeglass hanger member”

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