Never so obscure . . . 102103 Prior Art and Analogous Arts

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Never so obscure . . .102/103 Prior Art and
Analogous Arts

• Patent Law Professor Merges
• 10.16.08

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Sources of 102/103 Art

• 35 USC 103 differences between subject matter
  sought to be patented and the prior art
• Graham scope and content of the prior art
• What is the prior art or purposes of 103?

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Gradual expansion of 102/103 Prior art

• 102(a) not controversial
• 102(b)
• The problem of prior art that is not
• actually in existence prior to the invention
• Recall section 103 . . . At the time the
  invention was made . . .

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• 103. Conditions for patentability non-obvious
  subject matter
• (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.

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WL Gore v. Garlock
Gore Filing Date
Gore Invention Date
Gore Critical Date
Cropper on sale/in public use activity
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WL Gore v. Garlock
Gore Filing Date
Gore Invention Date
Gore Critical Date
Cropper on sale/in public use activity
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• In re Foster (1965), p. 785
• 102(b) IS a proper source of 103 prior art
• In re Bass, 474 F.2d 1276, 177 U.S.P.Q. (BNA) 178
  (C.C.P.A. 1973)
• 102(g) IS a proper source of 103 prior art

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• In re Foster, 343 F.2d 980, 988, 145 U.S.P.Q.
  (BNA) 166 (C.C.P.A. 1965)
• The contention seems to be that 102(b) has no
  applicability where the invention is not
  completely disclosed in a single patent or
  publication, that is to say where the rejection
  involves the addition to the disclosure of the
  reference of the ordinary skill of the art or the
  disclosure of another reference which indicates
  what those of ordinary skill in the art are
  presumed to know, and to have known for more than
  a year before the application was filed. . . .

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In re Foster (contd)

• On logic and principle we think this contention
  is unsound, and we also believe it is contrary to
  the patent law as it has actually existed since
  at least 1898.

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• First, as to principle, . . . we cannot see that
  it makes any difference how the public came
  into possession of the information, whether
  by a public use, a sale, a single patent or
  publication, or by combinations of one or more of
  the foregoing. In considering this principle we
  assume, of course, that by these means the
  invention has become obvious to that segment of
  the public having ordinary skill in the art.. .
  . .

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• Hazeltine Research, Inc. V. Brenner, 382 U.S. 252
  (1965)
• 102(e) as a source of 103 Prior Art

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Prior art

• Regis filed Dec. 23. 1957

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• The Wallace patent, however, was
• pending in the Patent Office when the Regis
  application was filed. The Wallace application
  had been pending since March 24, 1954, nearly
  three years and nine months before Regis filed
  his application and the Wallace patent was issued
  on February 4, 1958, 43 days after Regis filed
  his application. p. 731

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• While we think petitioners argument with regard
  to 102(e) is interesting, it provides no reason
  to depart from the plain holding and reasoning in
  the Milburn case. The basic reasoning upon which
  the Court decided the Milburn case applies
  equally w ell here. When Wallace filed his
  application, he had done what he could to add his
  disclosures to the prior art. -- 732

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Oddzon Prods v. Just Toys, Inc.

• Design patent
• Same standards for 102 and 103, in general

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(No Transcript)
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Is 102(f) prior art?

• Book, page 779
• Is 102(f) more like 102(a), (b), (e), and (g)?
• Or more like (c) and (d) loss of right?
• Or not like any other provision?
• Dictum in In re Bass 102(f) is not about prior
  art

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Oddzon holding

• District ct prior disclosures to eventual
  patentee were 102(f) prior art
• Recall Campbell v Spectrum Automation
• belt buckle case
• Affirmed here continues expansion of 102 art for
  103 purposes

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Obscure prior art and internal research teams

• Expansion of 102/103 prior art
• Technical definition of inventive entities
• Problem!

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The 1984 Amendment to 103

• Added what is now 103(c)
• Subject matter developed by another inventive
  entity, which qualifies as prior art only under
  102(e), (f) or (g), shall NOT preclude
  patentability where subject matter and claimed
  invention were owned by same person or subject to
  obligation of assignment to same person at time
  invention was made

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Owned by same person or under obligation to
assign the importance of Contracts!

• Same prior art that would invalidate patent when
  created by independent parties will be REMOVED
  from prior art by contractual agreement by all
  parties

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Legislative activity

• Cooperative Research and Technology Act of 2004,
  P.L. 108-453, Dec., 2004
• Extended section 103(c) to cover situation of
  contractual joint research projects

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Recent Legislative Activity

• The same benefit available under 35 USC 103(c)
  will also apply to joint research teams where
  the claimed invention was made by or on behalf
  of parties to a joint research agreement that was
  in effect on or before the date the claimed
  invention was made.

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• (2) For purposes of this subsection, subject
  matter developed by another person and a claimed
  invention shall be deemed to have been owned by
  the same person or subject to an obligation of
  assignment to the same person if -
• (A) the claimed invention was made by or on
  behalf of parties to a joint research agreement
  that was in effect on or before the date the
  claimed invention was made

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• (B) the claimed invention was made as a result of
  activities undertaken within the scope of the
  joint research agreement and
• (C) the application for patent for the claimed
  invention discloses or is amended to disclose the
  names of the parties to the joint research
  agreement.

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• (3) For purposes of paragraph (2), the term
  "joint research agreement" means a written
  contract, grant, or cooperative agreement entered
  into by two or more persons or entities for the
  performance of experimental, developmental, or
  research work in the field of the claimed
  invention.

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• Section 103(c) of title 35, United States Code,
  is amended to read as follows
•     (c)(2) For purposes of this subsection,
  subject matter developed by another person and a
  claimed invention shall be deemed to have been
  owned by the same person or subject to an
  obligation of assignment to the same person if--
•    

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• (A) the claimed invention was made by or on
  behalf of parties to a joint research agreement
  that was in effect on or before the date the
  claimed invention was made
•    (B) the claimed invention was made as a
  result of activities undertaken within the scope
  of the joint research agreement and
•    (C) the application for patent for the
  claimed invention discloses or is amended to
  disclose the names of the parties to the joint
  research agreement.
•    

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• (3) For purposes of paragraph (2), the term
  joint research agreement' means a written
  contract, grant, or cooperative agreement entered
  into by two or more persons or entities for the
  performance of experimental, developmental, or
  research work in the field of the claimed
  invention.''

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Other 103 Issues

• 103(b)
• Biotech-specific provision
• Limited uses

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Analogous Arts
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• United States Patent 4,683,949 Sydansk ,   et al.
  August 4, 1987 Conformance improvement in a
  subterranean hydrocarbon-bearing formation using
  a polymer gel Conformance improvement is
  achieved in a subterranean hydrocarbon-bearing
  formation using a gel. The gel components are
  combined at the surface and injected into the
  desired treatment zone via a wellbore
• Inventors Sydansk Robert D. (Littleton, CO)
  Argabright Perry A. (Larkspur, CO) Assignee
  Marathon Oil Company (Findlay, OH)

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(No Transcript)
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Analogous arts tests

• From same field?
• Pertinent to problem solved?

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Sydansk reference

• Board of Appeals same field (oil extraction)
• Federal Circuit wrong!
• Storage vs extraction

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Sydansk Same Problem?

• Differences in conditions governing problem to be
  solved
• Underground conditions different from storage
  tanks
• PHOSITA faced with Clays problem would not look
  in oil extraction art AGREE?

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Counterpoint In re Paulsen

• Hinge in laptop computer claim
• Other mechanical arts relevant problem not
  unique to portable computers . . .
• Importance of problem focus

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General Principles

• In re Mariani, 177 F.2d 293Cust. Pat.App. 1949
• Application was properly rejected with respect to
  certain claims for patent for fruit juice
  extractor, where features claimed to be novel
  were not in fact novel, but were scientific
  necessities, or, at least, scientifically
  desirable and well known to those skilled in the
  art, and had been used in a fishing reel and in
  automobile jacks.

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State Contracting Engineering Corp. v. Condotte
America, Inc.346 F.3d 1057C.A.Fed. (Fla.),2003

• Technology Highway construction, integrated
  column and pile
• Reference Xanthakos, Slurry Walls

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Xanthakos Reference

• Slurry Walls (McGraw-Hill Series in Modern
  Structures)
• Author(s) Petros P. XanthakosRelease Date
  September, 1979

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• A factfinder could reasonably conclude that the
  inventor's field was the use of integrated column
  and pile structures to provide support. The
  written descriptions of the two patents indicate
  that the inventions are directed to an integral
  column and pile for use in building structures in
  sandy soil, and there is at least a question of
  fact as to whether Xanthakos is within the field
  of integral column and pile support structures,
  since Xanthakos teaches a "prefounded column"
  consisting of a column that merges with the pile
  when the concrete of the pile hardens around the
  column, and explains that the prefounded columns
  are used to support a superstructure.

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KSR P. 674

• When a work is available in one field of
  endeavor, design incentives and other market
  forces can prompt variations of it, either in the
  same field or a different one. If a person of
  ordinary skill can implement a predictable
  variation, 103 likely bars its patentability.