2. Patent, Trademark, Copyright, and Enforcement - Law and Policy November 5-8, 2007 United States Patent and Trademark Office Global Intellectual Property Academy Minna Moezie IPR Attaché U.S. Commercial Service U.S. Embassy Cairo

3. 2 Overview  What is anticipation?  US Law  Forms of Disclosure  Grace Periods  Examples  Obviousness/Inventive Step  35 U.S.C. § 103  Graham v. John Deere inquiries  Supreme Court decision in KSR Int’l. Co. v. Teleflex, Inc.  A prima facie case of obviousness

4. 3 Novelty/Anticipation

5. 4 Anticipation “Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.” RCA Corp. v. Applied Digital Systems, Inc., 221 USPQ 385, 388 (Fed. Cir. 1984) MPEP 2131

6. 5 Inherency/Implied Teachings Prior art reference inherently describes a claim’s limitation if the limitation “naturally flows” from the reference, i.e., it is necessarily, inevitably, or without question in the prior art reference (not possibly or probably)

7. 6 US Law: 35 U.S.C. § 102  35 U.S.C. § 102(a) Known or used by “others” in the U.S., patented or described in a printed publication anywhere, before applicant’s date of invention.  35 U.S.C. § 102(b) Public use or on sale in the U.S. by anyone, even the inventor, or patented/described in a printed publication anywhere, more than one year prior to the date of application for patent.

8. 7 35 U.S.C. § 102  35 U.S.C. § 102(e) Described in a U.S. patent, published U.S. patent application, or WIPO/PCT document (which meets requirements), by another, filed before applicant’s date of invention.

9. 8 35 U.S.C. § 102 35 U.S.C. § 102(f) – Derived from another. 35 U.S.C. § 102(g) – Interference or evidence that the invention was made before and not abandoned.

10. 9 Forms of Disclosure Published References  Generally used in rejections based on § 102(a), (b), and (e)  U.S. or foreign patents, published patent applications, journal articles, books, technical bulletins, advertisements, service manuals Non-Published References  Evidence of knowledge or use by others - § 102(a).  Evidence of public use or sale - §102(b).

11. 10 Dates of Published References 35 U.S.C. § 102 (b) – Statutory Bar Issue Date Publication Date 35 U.S.C. § 102 (e) – U.S. Patent, Published Patent Application Filing Date International Filing Date of Certain WIPO/PCT Publications 35 U.S.C. § 102 (a) – Patent or Publication Issue Date Publication Date

12. 11 STEP 1: Find application’s earliest effective U.S. filing date STEP 2: Find prior art’s publication date STEP 4: Find the prior art’s filing date or publication date Consider applicability of §102(e) Use §102(e) flow chart Consider applicability of §102(a) yes Apply §102(b) no STEP 3: Is the reference available as a §102(b)? STEP 5: Flow chart for considering 35 U.S.C. §102 dates

13. 12 Filing Date Earliest effective U.S. filing date is 3/14/94. Earliest foreign priority date is 3/12/93 (under 35 U.S.C. §119). The examiner must check the foreign priority documents to make sure basis is present for the claimed subject matter.

14. 13 35 U.S.C. § 102 (b) Example with Foreign Patent as Prior Art One year before filing date 9/03/01 Prior art publication date 12/29/00 Application filing date 9/03/02 An issue date prior to one year before the filing date invokes a Statutory Bar Application No.: 10/234,567 Filing Date: 9/3/2002 Inventor: Espenshade, L. K. Continuity: None Foreign Priority: None Application being examined Prior Art

15. 14 Grace Period Time period prior to filing in which applicant’s own work cannot be used against them as prior art Provides a limited time period to file after an intentional or accidental disclosure of the invention Balances applicant needs with desire for early filing

16. 15 Examples of Grace Periods The grace period in the U.S. is 12 months [35 U.S.C. § 102 (b)] Japan has a 6 month grace period. EPO has no grace period.

17. Conclusion 35 U.S.C. § 102 – Lack of Novelty Published References § 102 (b) – Statutory Bar Rely on issue date or publication date § 102(e) – Rely on filing dates of: U.S. Patents, U.S. Patent Application Publications, and WIPO/PCT International Applications in English, designating the U.S., filed after 11/29/2000 § 102(a) – Rely on issue date or publication date of: U.S. or Foreign documents

18. ANTICIPATION/ NOVELTY Potato Chip Glaze Example

19. 18 Potato Chip Glaze Claim 1. A composition comprising salt, sugar and an oily compound having 12-18 carbon atoms. Prior art: Jones et al (Jones) A drain cleaning composition comprising salt, sugar, an oily compound having 8-16 carbon atoms, and sulfuric acid wherein the composition has a pH of 3. Examples wherein the oily compound has 8, 12 and 16 carbon atoms. Claim 2. A compound according to claim 1 wherein the oily compound has 14 carbon atoms. Claim 3. A compound according to claim 1 further comprising acetic acid.

20. 19 Potato Chip Glaze Claim 4. A composition for glazing potato chips comprising salt, sugar and an oily compound having 12-18 carbon atoms. Prior art: Jones et al (Jones) A drain cleaning composition comprising salt, sugar, an oily compound having 8-16 carbon atoms, and sulfuric acid wherein the composition has a pH of 3. Examples wherein the oily compound has 8, 12 and 16 carbon atoms. Claim 5. A potato chip glaze comprising salt, sugar, and an oily compound having 12-18 carbon atoms. Claim 6. A composition for glazing potato chips consisting essentially of salt, sugar, and an oily compound having 12- 18 carbon atoms.

21. 20 Potato Chip Glaze Claim 7. A composition consisting essentially of salt, sugar and an oily compound having 12-18 carbon atoms. Prior art: Jones et al (Jones) A drain cleaning composition comprising salt, sugar, an oily compound having 8-16 carbon atoms, and sulfuric acid wherein the composition has a pH of 3. Examples wherein the oily compound has 8, 12 and 16 carbon atoms. Claim 8. A composition comprising salt, sugar, and an oily compound having 12-18 carbon atoms wherein the composition is free of strong acids.

22. 21 Potato Chip Glaze Claim 1. A composition comprising salt, sugar and an oily compound having 12-18 carbon atoms. Prior art: Lakewood et al (Lakewood) A coating composition comprising salt, sugar and an oil having 8-40 carbon atoms. Example wherein the oil has 30 carbon atoms. Claim 2. A compound according to claim 1 wherein the oily compound has 14 carbon atoms. Claim 3. A compound according to claim 1 further comprising acetic acid.

23. 22 Potato Chip Glaze Claim 1. A composition comprising salt, sugar and an oily compound having 12-18 carbon atoms. Prior art: Landrum et al (Landrum) A coating composition for corn chips comprising salt, sugar, an oil having 16-18 carbon atoms and vinegar. Claim 2. A compound according to claim 1 wherein the oily compound has 14 carbon atoms. Claim 3. A compound according to claim 1 further comprising acetic acid.

24. 23 Conclusions Examiners generally use published references as prior art in 102(a), (b) and (e) rejections A reference “anticipates” an invention if every structural limitation is explicitly or inherently disclosed in the prior art and the prior art is at least capable of performing the function Claims are given their broadest reasonable interpretation

25. 24 Obviousness/Inventive Step

26. 25 Analysis of 35 U.S.C. 103 (a) 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 art 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.

27. 26 Analysis of 35 U.S.C. 103 (a) (Continued) 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 art 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.

28. 27 DISTINCTION BETWEEN 35 U.S.C. 102 AND 103 The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103… for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP § 2131 - § 2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103.

29. 28 OBJECTIVE  The Graham v. John Deere inquiries 383 U.S. 1, 148 USPQ 459 (1966)

30. 29 Graham v. John Deere The Supreme Court in Graham v. John Deere, 383 U.S. 1, 148 USPQ 459 (1966), stated: under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; the level of ordinary skill in the pertinent art resolved; and the evidence of secondary considerations evaluated Against this background, the obviousness or nonobviousness of the subject matter is determined. MPEP 214135 U.S.C. 103; the Graham Factual Inquiries

31. 30 Graham v. John Deere Inquiries (Continued) Inquiry One: Determining the scope and content of the prior art. First obtain a thorough understanding of the invention disclosed and claimed. Give the claims the “broadest reasonable interpretation consistent with the specification.” The search should cover the claimed subject matter and disclosed features that might reasonably be expected to be claimed. Follow the general search guidelines set forth in MPEP 904 and 904.03 regarding search of the prior art.

32. 31 Graham v. John Deere Inquiries (Continued) Inquiry Two: Ascertaining the differences between the prior art and the claims at issue (MPEP 2141.02) Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole. In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983)

33. 32 Graham v. John Deere Inquiries (Continued) Inquiry Three: Resolving the level of ordinary skill in the pertinent art--MPEP 2141.03 The “‘hypothetical person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988)

34. 33 Graham v. John Deere Inquiries (Continued) Inquiry Three: Resolving the level of ordinary skill in the pertinent art -- (Continued) Factors that may be considered in determining level of ordinary skill in the art include the educational level of the inventor; type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; educational level of active workers in the field. –Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).

35. 34 Graham v. John Deere Inquiries (Continued) Inquiry Four: Evaluating evidence of secondary considerations --MPEP 2141 Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquires may have relevancy...

36. 35 OBJECTIVE Supreme Court decision in KSR Int’l. Co. v. Teleflex, Inc. 127 S. Ct. 1727, 82 USPQ2d 1385 (April 30, 2007)

37. 36 KSR Int’l. Co. v. Teleflex, Inc. Obviousness is a question of law based on underlying factual inquires. The Supreme Court reaffirmed the basic factual inquires of Graham v, John Deere Co. in the determination of obviousness under 35 U.S.C. 103 (a).

38. 37 KSR Int’l. Co. v. Teleflex, Inc. “The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents... In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demands, rather than scientific literature, will drive design trends.”

39. 38 KSR Int’l. Co. v. Teleflex, Inc. The Court noted that the analysis supporting a rejection under 35 USC 103 (a) should be made explicit, and that it was “important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the [prior art] elements” in the manner claimed.

40. 39 KSR Int’l. Co. v. Teleflex, Inc. When considering obviousness of a combination of known elements, the operative question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.”

41. 40 OBJECTIVE A Prima Facie Case of Obviousness (MPEP 2141 - 2145)

42. 41 Prima Facie Obviousness  A case sufficient on its face, being supported by at least the requisite minimum evidence…one in which the evidence is sufficient to support but not to compel a certain conclusion and does no more than furnish evidence to be considered and weighed… Law Dictionary 370 (3 rd ed. 1991)

43. 42 Prima Facie Obviousness The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.

44. 43 Prima Facie Obviousness Who goes first ? The Examiner !

45. 44 Prima Facie Obviousness (Continued) The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness. MPEP 2142 Establishing prima facie obviousness-- MPEP 2141- 2145

46. 45 Communicating the Prima Facie Explanation that the Claimed Invention is not Patentable The examiner should state: The relevant teachings of the prior art relied on, preferably with reference to the relevant column or page numbers and line numbers where appropriate. The difference or differences in the claim over the applied reference(s). The proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter. An explanation why one of ordinary skill in the art at the time the invention of made would have been motivated to make the proposed modification. See MPEP 706.02(j) Contents of a 35 U.S.C. 103 Rejection

47. 46 Prima Facie Obviousness (Continued) REBUTTAL If a prima facie case is established, the burden shifts to applicant to come forward with rebuttal evidence or argument to overcome the prima facie case. MPEP 2144.08 Establishing prima facie obviousness -- MPEP 2141- 2145 (Continued)

48. 47 Prima Facie Obviousness (Continued) REBUTTAL When an applicant submits evidence, the examiner must reconsider the patentability of the claimed invention. The decision on patentability must be made based upon consideration of all the evidence, including the evidence submitted by the examiner and the evidence submitted by the applicant. MPEP 2142 Establishing prima facie obviousness -- MPEP 2141- 2145 (Continued)

49. Questions? Minna Moezie E-mail: Minna.Moezie@mail.doc.gov Telephone: +202 2797 2607