Chapter 1: Origins and Policies

Patents give the right to exclude others from making, using, offering for sale, or selling the invention
The invention needs to be
Adequately disclosed
New
Nonobvious
Useful
And be patentable subject matter
Article I, Section 8, Clause 8 of the Constitution
Congress is given the power to promote the Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive right to their respective writings and discoveries.
35 USC 154
Pending PRIOR to June 8, 1995
Either
(1) 17 years from the date of issuance
OR (2) 20 years measured from the filing date of the earliest referenced application, whichever is greater.
AFTER June 8, 1995
20 years measured from the filing date of the earliest referenced application
Example: Filed January 1994; issues January 2000
2000 + 17 = 2017
1994 + 20 = 2014
Philosophy of Patent Law
Lockean Labor Theory
When you use labor to create something new, you have ownership in it, and therefore should have protection.
Wanted to promote the useful arts
Utilitarian Theory
State should adopt policies that would maximize the happiness of members of its community
Recognizes that intellectual property restricts liberties, but tolerates it for the sake of the greater public
good
Economics of Patent Law
Incentives Quid Pro quo: right to exclude but for a limited time.
Incentive to Invent (pg 64)
Patents are granted to encourage production of inventions. Will not be able to recoup costs of invention,
including risk, unless ensure exclusive right (monopoly) on product of inventive efforts.
Incentive to Disclose (pg 65)
Patents are granted to encourage an enabling disclosure (under 35 U.S.C. 112) rather than having a trade
secret depriving the public of the new knowledge.
Incentive to Commercialize
Granted to deliver a useful invention into the hands of the public. If invest time to make the product,
would not take the risk if unable to profit because competitor would be able to profit without the
investment.
Incentive to Design Around
Grants the patent as forbidden turf, taunting competitors to circumvent its scope by inventing substitutes.
Important for drugs that produce certain side effects may need to produce a drug with different side
effects.

Chapter 2: Obtaining the Patent Grant

Specification: written description of the invention & the claims
Written description describes what the patent/invention is
Restriction requirement: can only claim one invention per patent
Within the written description there are various sub-sections:
(1) Title (i.e. cup-holder)
(2) Related applications (i.e. if you have a provisional application you filed in the past year, you list it here)

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 (3) Field of the invention: short sentence or two that describes what the invention relates to (i.e. this invention
relates to improved toothbrushes for cleaning your teeth) why write this? For patent offices convenience
when it comes to classifying your invention
(4) Background of the invention sets the stage in the art, addresses the unsolved problems in the prior art
and states the objects of the invention (i.e. toothbrush that lights up background: common for people to use
toothbrushes, but its dark in your mouth & cant see so its useful to have a product that allows u to see in your
mouth)
(5) Summary of the invention: brief description of the invention, longer than the abstract. Requires sufficient
detail to explain and distinguish the prior art (i.e. to deal with the prior problems in this art, I came up with a
light toothbrush)
(6) Summary of drawings: explains drawings in the application; helps explain the invention (some non-
mechanical patents dont contain a drawing) not absolutely required but recommended bc it helps explain
invention to examiner
(7) Detailed description of the invention & preferred evaluation: (i.e. what lights are you using in the
toothbrush, what batteries, etc.) You want to have sufficient detail in the written description to enable any
person skilled in the art to make and use the invention. Needs to include best mode.
(8) The claims: Need one or more that particularly point out and distinctly claim the subject matter which the
applicant regards as his invention. 35 U.S.C. 112, 2.
Three parts:
Preamble identifies the invention or the technical field of the invention
Transitions joins the preamble to the body of the claim, and is usually made up only of the word
comprising (invention includes the listed elements but does not exclude others) (consisting is
restrictive/exclusive)
Body recitation of the elements: steps or parts of the invention and the structural, physical, or
function relationship among the elements
Composition Claims
Markush Group selected from a group consisting of A, B, and C.
Encompasses those things that are included in the applicants invention while excluding those
which are not included in the applicants invention.
Process claims combination or sequence of acts or steps that are patented in a process claim, not the
resulting product.
Divided into (1) process or methods of making; and (2) processes or methods of using.
Apparatus claims mechanical structure which recites the purpose of the apparatus.
Needs to recite the connection among the elements sufficiently to clearly define the apparatus
ProductbyProcess claims (page 90)
Meansplusfunction (page 91)
An element in a claim for a combination to be expressed as a means or step for performing a specified
function

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 Reduction to practice
The developmental process where the inventor documents and records his or her conception of the invention as
well as ensuing development towards to practical embodiment
Responses to a Final Office Action
Applicant can:
(1) abandon the application
(2) file an appeal
Gets two months with seven months extension to file a brief
(3) take allowed claims and cancel the others
(4) file a continuing application
They need to be filed
Copendency - While the parent application is still pending
One common inventor common between the two applications
Text of the second must refer back to the first
Three types:
Continuing applications
Continuing-in-part applications
New matter new date
Divisional applications where have more than one invention in the app.
Publication
Doesnt publish for 18 months which gives you the choice of whether you want patent protection or trade secret
protection
Can opt out of publication
Need to clarify that there is not a counterpart in another country
If file elsewhere need to rescind nonpublication

Chapter 3: Disclosure Requirement (35 U.S.C. 112)

112 requires the patentee give the public fair notice of what the patentee and the patent office have agreed constitute
the metes and bounds of the claimed invention. Also requires the patentee to disseminate to the public information
concerning the patented subject matter
112, 1
Three distinct disclosure requirements:
(1) Written description
(2) Enablement
Manner of making and using it, in such full, clear, concise, and exact terms as to enable any person
skilled in the art to make and use the same
AND (3) Best Mode
Contemplated by the inventor in carrying out his invention
112, 2
Provides a fourth requirement:
Applicant must particularly point out and distinctly claim the invention.
Enablement
Required to set for sufficient information in the specification to enable a person skilled in the relevant art to make
and use the claimed invention without undue experimentation.
Specification needs to describe the manner of making and using the invention in such clear terms as to enable
any person skilled in the art to make and use it.

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 OReilly v. Morse (page 151) [Telegraph with Morse Code]
Issues arose with the 8th claim
Was not limiting to the telegraph machine. Was trying to write the claim to prevent any use of
electromagnetism to transmit letters to print at a distance because was a new application of the power
where he claimed to be the first inventor to do this.
Might exclude other inventors from making improvements in the field.
Majority claims that the inventor has not enabled every single way to use electric or galavanic current
to print at a distance, only one specific way.
Concerned about giving a broader scope than inventor deserves.
Counter Argument: Invention required ingenuity to create something new, it is broad and not a law of
nature, Came up with the broad invention, this is not a law of nature so should get benefit of entire
protection.
To allow this would defeat the purpose of giving a patent which is the incentive to design
around.
Would not be providing a benefit to the public.
DISSENT: Claims the construction of the 8th claim to read covering the art of writing at a distance by
means of electromagnetism is misconstrued. (pioneer patents)
The larger the invention leap, the more one should be able to patent.
Believes if someone makes an improvement, could be patent but would not have the right to use
the original and that would not halt progress.
In re Glass (page 163) [Whisker crystals]
Court ruled that the claims under 112 were unsupported in the written description
Need to have sufficient disclosure so that someone skilled in the art can make and use the invention
There were insufficient examples with vague words that were not defined and not clear to one who is
skilled in the art
The temperatures, pressures, vapor saturation, and other factors were not sufficient within the
written description to enable someone skilled in the art to make or use the invention
Would require too much undue experimentation (page 178)
Have to provide enough information to provide someone skilled in the art to reproduce the
invention without excessive experimentation.
Factors of undue experimentation
(1) quantity of experimentation necessary
(2) the amount of direction or guidance presented
(3) presence or absence of working examples (gives proof of enablement)
(4) nature of the invention
(5) state of the prior art
(6) the relative skill of those in the art
(7) predictability or unpredictability of the art, (mechanical predictable where chemical is
unpredictable) AND
(8) the breadth of the claims
Could be considered to have a best mode problem because no example is provided to explain at what
temperatures the crystals are best formed
Trying to use references to fill in the insufficiencies of disclosures and make the written description more
clear
Unable to use patents as a reference that was filed after his filing date. Only patents filed
beforehand can be used. These references were filed after.
Not permitted to add new matter [35 U.S.C. 132] after filing. The filing date becomes the date of
constructive reduction to practice
Can Incorporate by reference of material that came before without having to repeat it all
Working example: particular recitation of what the inventor did to create a particular result
Prophetic example: Theoretical recitation of what someone should do to create an expected result, but the
person has not actually done it.
In re Hogan (page 171) [Chemical polymer creation] (No new matter)
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 Patent office cannot use evidence created after the filing date to prove their argument.
PTO rejected application claiming the written description did not enable the later art
Applicants were arguing that under 120 claiming priority from previous applications
Board held that the 1971 application should be given the same effect as if the application were filed on
the date of the 1953 and 1956 patents for the respective claims.
The disclosure enables formation of crystalline form, but did not enable an amorphous form.
Applicants are trying to say that they enabled the amorphous form in 1953, but the amorphous form did
not exist until 1962, so it is impossible to say that their patent enabled the amorphous form. The original
patent where claim covered both but the description didnt support both so the claim was too broad.
Best Mode
112 1 sets forth that the specification shall set forth the best mode contemplated by the inventor of carrying
out the invention
Requires the inventor to give the best way of making the invention to prevent inventors from obtaining patent
protection while concealing from the public preferred embodiments of their claimed invention
For protection need to fully benefit the public as part of quid pro quo
Without best mode is now still considered to be valid since AIA
Best mode TWO PRONG TEST
(1) Whether at the time the inventor filed his patent application, he knew of a mode of practicing his claimed
invention that he considered to be better than any other
Wholly subjective
(2) If the inventor in fact contemplated such a preferred mode, was it disclosed? Was the disclosure adequate
to enable one skilled in the art to practice the best mode or has the inventor concealed his preferred mode
from the public.
Objective inquiry that depends on the scope of the claimed invention and the level of skill in the art
Written Description
112, 1 provides that the specification shall contain a written description of the invention.
Purpose is to allow parties/the public to read the patent document and understand with a substantial degree of
certainty where the patentees proprietary boundaries reside.
Gives public ability to develop and obtain patent protection for later improvements and subservient
inventions that build upon the patentees teachings.
Typically used for figuring out what one can claim based on what is written in the specification
You can only claim what you describe in the written description
Does not need to be disclosed ipsis verbis (word for word). Needs to only reasonably convey to persons
skilled in the art that the inventor had possession of the subject matter in question
Different from Enablement
Can have a spec enabling someone to make something, but doesnt disclose the product.
i.e. wagon; disclose a 3 wheel wagon and enabled someone to make it. If you try to claim 4 wheels, you
enabled both but did not describe the 4 wheel wagon
The written description requirement is to state what is needed to fulfill the enablement criteria. More than just
enablement, must convey with reasonable clarity that at the time of filing they were in possession of the
invention.
Different from Definiteness
Written description is that anything claimed must be described
Definiteness is vagueness and the need to give public notice
Vas-Cath Inc. v. Mahurkar (page 186) [Cocentric split lumen catheters]
First filed 081 Design app; filed Canadian application (published patent 9/9/82); then filed US application
10/1/1984 claiming priority back to the 081 Design app.
If didnt have priority from the design app, then it would be invalid due to the Canadian application
The application talked about split concentric lumens in catheters where the hole can now be made smaller
making the old one obsolete.
Question here was whether written description meant only words, or if it included drawings?
Found priority was established.

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 Then needed to determine if the drawing described the invention which was a question of fact which
should be left to the jury, not a question of law.
Design figures may provide a basis of support for later utility claims sufficient to satisfy the written
description requirement.
Fujikawa v. Wattanasin (page 207) [What sub-geneses are appropriate R groups]
Question of whether the invention was sufficiently disclosed in the written description
Does not need to be disclosed ipsis verbis (word for word)
Needs to only reasonably convey to persons skilled in the art that the inventor had possession of the
subject matter in question
Blaze marks
Not having blaze marks to mark the trail for the various sub-geneses when only disclosing the large genus
in the written description is not sufficient to describe the written description requirement.
Definiteness
112, 2 requires the applicant to particularly point out and distinctly claim the invention
Purpose is to provide an explicit notice to others as to what constitutes infringement of the patent. Also,
provides a clear measurement of the invention in order to facilitate determinations of patentability
This requirement ensures that the patent claims are clear on its face
Claim interpretation
Do not interpret two claims to mean the same thing.
Independent claims are presumed to be broader than dependent claims.
Dependent claims are used in case the independent claim fails, protected by the narrower version
Athletic Alternatives, Inc. v. Prince Mfg., Inc. (211) [Tennis splay varies between]
AAI is alleging Prince infringed. Cannot prevail when the patent claim is correctly construed, so no
infringement.
The language of the claim that is important is varies between
Prince argues that it is at least 3 distances; with a minimum and a maximum and one in between
Doesnt read on their vortex racket because it only has 2 distances.
The district court agreed with these arguments
Between meaning the space that separates
Space between buildings
AAI says that when properly construed it reads on the splay pattern with two offset distances because
varies between does not say how many times it must change
Between meaning from one to the other, where dont need something in the middle
Air surface between two cities
To allow AAI to assert the broader of the two meanings would undermine the fair notice function that the
patentee distinctly claim the subject matter disclosed
Where there is an equal choice between the broader and the narrower meaning of the claim, and enabling
disclosure indicates that the applicant is at least entitled to a claim having the narrower meaning, we
consider the notice function of the claim to be best served by adopting the narrower meaning.

Chapter 4: Novelty (35 U.S.C. 102)

Pre-AIA
Timely ApplicationLoss of Right (35 U.S.C. 102(b))
A person shall be entitled to a patent unless
***
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of the application for patent in the United States

Who What When Where

Inventor/Third Party Patented/described More than one year USA/Foreign Country
invention in printed before filing date of
publication patent application

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Inventor/Third Party Offered for sale, sold, or More than one year USA
publically used before filing date of
invention patent application

The Critical Date to consider is the period one year before the application was filed
Difference between the concept of novelty (Sections 102(a), (e), and (g)) triggered by the anticipatory work of
others and loss of right (Sections 102(b) and (d))
Pennock v. Dialogue (274) [garden hose]
A special garden hose was created in 1811, but the inventor did not seek protection until 1818.
The defendant objected to the patent because the inventor cannot take it away because he made it
available to the public
If an inventor makes his discovery public, looks on and permits others to freely use it, without
objection or assertion of claim to the invention, of which the public might take notice; he abandons
the inchoate right to the exclusive use.
By waiting too long to patent the idea, and it is known or used by the public, may not be able to get a
patent
Gave disclosure without protection, there is nothing to exchange.
This is past the grace period. Allow testing of the market or get feedback from use to improve for
patenting.
Disclosed to public already, no reason to give limited monopoly as there is no longer a quid pro quo
Public Use
102(b) A person shall be entitled to a patent unless the invention was in public use in this country
more than one year prior to the date of the application for patent in the United States
Egbert v. Lippmann (288) [Corsett Steels] (Private v. Public)
The invention was an improvement on the corset steels and the inventor waited 11 year before applying for a
patent. The discussion was over whether the invention was in public use. It was determined to be public use.
Argument not public use:
It was only used by one person and the nature of the item was private as an undergarment and not
observed by the public. It was impossible for anyone to see the steels.
Dissent: believes it is a cautionary tale of not knowing the line between public and private use even
when withheld from public observation
Argument was public use:
There was no limitation on the person when he allowed the use or injunction of secrecy. It was not
being maintained as a trade secret. It was not for purpose of experiment
It does not depend on the number of persons to whom its use is known. If an inventor gives or sells it to
another, to be used without limitation, or restriction, or injunction of secrecy, and it is so used, the use is
public, even though the knowledge is confined to one person.
It does not matter if the invention cannot be seen
Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co. (291) [metal conditioning]
The inventor gave consent allowing the public to use his invention.
The right is forfeited regardless of how little the public may have learned about the invention
There was commercial exploitation and gain to his machine and therefore it is public use even if the process is
held secret.
Product sold publically, process kept secret.
Experimental Use
EXCEPTION to the public use bar. The 102(b) statutory bar will not trigger if the use was incidental to
experimentation
City of Elizabeth v. American Nicholson Pavement Company (294) [wooden pavement testing]
Wooden pavement was used for 6 years prior to patenting, but inventor claimed it was experimental because
it had to be used publically to test the durability of the pavement
It was clear from the evidence that there was no intention to abandon the patent right. He kept it under his
control.
Wanted to see how it held up against heavy loaded wagons and frequently examined the pavement
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 Looking at:
The condition
Striking it with his cane
Asking how people liked it
The use by the public was an incident of the experiment. Permitted to experiment because patenting is
expensive and want to ensure it is worth the investment.
it is the circumstances under which Nicholson laid down the pavement that is the pertinent inquiry.
Lough v. Brunswick Corporation (298) [Boat seal corrosion testing]
The upper seal assembly in stern drives often failed due to corrosion so Lough designed a new seal.
Made 6 usable prototypes and installed them in boats.
Did not ask for or receive any comments about the prototype and did not sell them.
Lough got a patent, but Brunswick learned about the intention and tried to make tier own
Brunswick asserted that the prototype uses were not experimental
The factors for considering whether the use was experimental are:
1) Number of prototypes and the duration of testing
2) whether there are records or progress reports
3) existence of secrecy agreements b/w party and tester
4) whether received compensation
5) extent of control over testing and inquiry into testing
Lough argues that the use was experimental because received no compensation, did not put on sale until
after patent and only gave the prototypes to friends who used them in a manner unlikely to be seen by
public.
The Court disagrees with Lough because there was no control over the use and there was no inquiry
into the testing
A boat with one in it was sold without knowing
The jury had no legal basis to conclude that the uses of the prototypes were experimental and that
they were not in public use prior to the critical date
Dissent
Jury said it was experimental use making the patent valid, but on appeal Fed. Cir. Determined it was not
and should only overrule jury in limited circumstances
Close question and should have been left to the jury and wasnt the courts job to substitute their
opinion for that of the jurys
Small inventor who didnt know the law and believed if there was a problem with the seal, someone
would have come to him. Absence of complaints meant success
On Sale Bar
102(b) A person shall be entitled to a patent unless the invention was on sale in this country more
than one year prior to the date of the application for patent in the United States
On sale means
(1) commercial offer for sale
(2) Ready for patenting
(1) proof of reduction to practice before the critical date
(2) proof that prior to the critical date the inventor prepared materials sufficiently specific to enable
practice of invention
Pfaff v. Wells Electronics (308) [sketch for sale] (When invention is ready to be patented)
Showed a sketch of a concept to Texas Instruments in March 81 and April 8, 81 made an order
The application was filed April 19, 82, making the critical date April 19, 81.
Pfaff tried to say that it was not on sale because it was not an actual invention because it was just a sketch and
the actual invention was when the invention was reduced to practice in the summer of 1981 (within the one
year)
Difference between actual and constructive reduction to practice
Actual the item has been made and the process has been performed
Constructive - when file the patent application that includes all of the details of the invention

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 Federal Circuit standard was whether the invention was substantially complete and they determined that the
on sale bar could not apply because it was not substantially complete. NO LONGER THE STANDARD
TWO REQUIREMENTS:
NEW STANDARD FOR INVENTION
Invention when it is ready for patenting meaning
(1) proof of reduction to practice before the critical date
(2) proof that prior to critical date inventor prepared materials sufficiently specific to
enable practice of invention
On sale means commercial offer for sale
Any attempt to use it for a profit, and not by way of experiment, for longer period than two years
before the application, would deprive the inventor of his right to a patent
When they accepted the purchase order, the invention was considered ready for patenting

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 Third Party Activity
Lorenz v. ColgatePalmolivePeet Co. (334) [stolen soap, sucks to suck]
Lorenz applied for a patent on soap and went to Colgate and Colgate said not interested in the invention
Patent gets rejected and then he lets the patent go abandoned
Colgate then files an application
Lorenz then reopened prosecution and got the patent and then went after Colgate for infringement
Colgate tries to claim that the public use by Colgate barred his patent
Issue was that they got the idea to use from Lorenz in the first place. Lorenz argues that Congress did not
intend the provision of the statute to bar the grant of a valid monopoly to an inventor whose disclosures
have been stolen by the person they confided in
Colgate says would have refused to receive the disclosures because they were working on their own
ideas
Doesnt matter because although the court is sympathetic, they dont want to extend patent terms
Once the invention is in public use, people have access to it and need to file the application
Baxter International, Inc. v. COBE Laboratories Inc. (337) [non-confidential centrifuge]
COBE claims that the use in the laboratory was public use because it was publically accessible and those who
saw it in operation were under no duty of confidentiality
Court agrees with COBE because the laboratory was in a public building and he testified that people were
coming and looking and flowing into the lab
The lack of effort to maintain it as confidential coupled with the free flow into the laboratory of people
who were under no duty of confidentiality supports that it was in public use
Dissent
Not a public use because was in a private area not public area making it an individual private use

Foreign Activity as a Statutory Bar (35 U.S.C. 102(d))

102(d) bars a foreign patent application from obtaining a United States patent if:
(1) Same inventor
(2) Same invention
(3) Foreign application is filed more than one year before the U.S. Application is filed AND
(4) The foreign patent issues before the U.S. patent is filed.

Who What When Where

inventor Patents invention More than one year Foreign Country
before filing USA
patent application

Example:
France filed app Jan. 5, 2005
France issue Apr. 10, 2006
U.S. filed app. May 1, 2006
Barred by 3 and 4 because more than one year after filed and it issued

In re Kathawala (345)
Filed in US then in Greece and Spain
Argue were invalid under Greek law so shouldnt hold but court said would be too burdensome for examiners
Claims were different but didnt matter. Care about the same invention not the same claims.

Novelty/Anticipation (35 U.S.C. 102)

The anticipation provisions of section 102 operate to prevent a patent from issuing on claimed subject matter that was not
new at the time of invention. (met every element of the claims was in one reference prior. Provides no grace period.

35 U.S.C. 102 (pre-AIA)

A person shall be entitled to a patent unless

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 (a) The invention was known or used by others in this country, or patented or described in a printed publication in
this or a foreign country, before the invention thereof by the application for a patent, or
Who What When Where
Third Party Knew or used invention Before date of invention USA
Third Party Patented/described Before date of invention USA OR Foreign
invention in printed Country
publication

(e) the invention was described in (1) an application

Who What When Where

Third party Describes invention in Filed before date of USA/Foreign Country
patent application that invention
ultimately
issues/publishes OR
PCT application is
published in English

(g)

Who What When Where

Third Party Invented invention Before date of USA
invention

Proving Date of Invention

102(a), (e), and (g) focus on events prior to the date of the invention of the applicant
Mahurkar v. C.R. Bard, Inc. (351) [Cook catalog loses to diligence]
M gets a patent and sues Bard and Bard claims the patent was invalid due to a Cook catalog as prior art. M
wins because shows that had conception with reasonable diligence through the reduction to practice date
M relies on constructive reduction to practice to get around the Cook catalog, saying that M invented before
the Cook catalog was released.
Needs to have evidence to prove this
Corroborated oral testimony
Rule of reason analysis is applied
Reduction to practice before prior art date OR
Actual reduction to practice requires demonstration that the invention is suitable for its intended
purpose
Reasonable diligence from conception to reduction to practice, if the reduction to practice data is after
the prior art date.
Conception is to have the invention formed in their mind a definite permanent idea of the
complete and operative invention. To be so clearly defined in the inventors mind that only
ordinary skill would be necessary to reduce the invention to practice, without extensive research
or experimentation
Showed that in late 1980, early 1981 constructed a prototype, but began working on it in 1979.
Identity of Invention and Anticipatory Enablement
To anticipate, the invention needs to be prior, but it also needs to have an adequate disclosure under the
enablement requirement.
In re Paulsen (358) [Flip calculator enables a laptop]
102(b)
The inventor argued that the disclosure of the prior art was not enabling
The reference needs to enable the invention, meaning it places the invention in possession of a person of
ordinary skill in the field of the invention, in order to be a reference under 102.
The inventors argument fails because the prior art reference needs to be considered together with the
knowledge of one of ordinary skill in the art.
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 One skilled in the art was capable of providing the circuitry necessary to make the device operable for use
as a computer
Known or Used
Gayler v. Wilder (364) [lost safe found again]
The invention was for a safe, but it was not the first and original invention because someone made it exactly
like this before
The inventor came up with the idea independently
The idea of how to make this safe was lost art because it was known a long time ago but it is no longer in
existence.
The inventor is rewarded for the discovery because they are bringing knowledge back; believed was the
original inventor and places the invention in their possession.
If the patentee at the time of his application believed himself to be the first invention, the patent shall not be
void on account of the invention or discovery having been known or used in any foreign country, it not
appearing that it had been before patented or described in any printed publication
If it is not patented or described in any printed publication, it might be known and used in remote places
for ages, and the people of this country be unable to profit by it; it would be the same thing as if the
improvement had never been discovered.
Rosaire v. Baroid Sales Division (367) [oil method; if not first, youre last] OCT 1 1..
New method of prospecting for oil and determining where it is located
A third party was using this method in fields before the date of this patent
The patents were held to be invalid because they were not first in the developing of this method although the
information was not known
The company openly used the method in the usual course of business before the patentee conceived of the
invention
Open use in the ordinary course of business may serve as prior art. There is no requirement of an
affirmative act to bring the use of the invention to the public at large.
Described in a Printed Publication
A document needs to be both physically and logically available to a hypothetical member of the interested public.
In re Hall (380) [German library thesis available before critical date]
Determine that a thesis is a printed publication more than one year prior to the applications effective filing
date.
The debate was whether the thesis was available as such a printed publication. There was no debate that
the thesis was prior to the application.
The dissertation was sent in Nov. 1977 and made available Dec. 1977 meaning it was reasonable to
believe that the thesis was available prior to February 27, 1979 when the application was filed.
On appeal, the appellant loses, but raises the arguments that the publication was not accessible because the
dissertation was not properly index prior to the critical date AND even if it was, the presence of a single
cataloged thesis in one university library does not constitute sufficient accessibility
The arguments are rejected because the dissertation was probably index prior to the critical date based on
the librarys general practice for indexing, cataloging, and shelving theses
Additionally, those interested in the are exercising reasonable diligence would have access to finding the
thesis in the one university.
In re Cronyn (383) [Shoebox cataloged not accessible]
Determined that the theses were not printed publications
The theses were on file in the library on individual cards with the students name and the title of the
thesis. They were filed alphabetically by the authors name.
The reference must have been sufficiently accessible to the public interested in the art
Believed that this case was more similar to Bayer than to Hall.
Bayer the thesis was a printed publication but it was not available to the public until it was cataloged
and placed on the library shelves, which did nto occur before the critical date.
The theses in this case were not cataloged or index in a meaningful way because they were three out of
450 cards filed alphabetically in a shoebox and this availability was not sufficient to make the theses
reasonably accessible to the public.

12
 Patented
In re Carlson (388) [GG counts as patent]
PTO granted a re-exam to see if the issued patent was patentable based on new art/references
The references were:
German Geschmacksmuster german design registration
US patent to Scuito
Magazine Article
GG was considered to qualify as prior art under 102(a)
Question is, how much of a disclosure this disclosure is.
In re Talbot
Design protected by a GG qualifies under 102(d) as an invention patented in a foreign country. Rejected
the argument that it was of a copyright nature.
The rights granted in the GG fully discloses the design and are recognized as both substantial and
exclusive in nature, making it a patent for purposes under 102(a)
The embodiment of foreign protection must take a form that fully discloses the nature of the protected design
in a medium of communication capable of being widely disseminated

13
 102(e) Secret Prior Art
The prior art can defeat novelty even though the prior art is essentially inaccessible to the public including the
inventor
Who What When Where
Third party Describes invention in Filed before date of USA/Foreign Country
patent application that invention
ultimately
issues/publishes OR
PCT application is
published in English

Needs to describe the invention and ultimately publish.

(a) and (e) look at the invention date, where (b) does not
Applications filed on or after November 29, 2000, are to be published promptly after the expiration of a period of
18 months from the earliest filed date.
Alexander Milburn Co. v. DavisBournonville Co. (394) [Delays of PTO dont penalize disclosure]
Clifford filed application before Whitford and described the invention. If had claimed the invention, it would
have been an interference. Dont need claims to have the invention reduced to practice. Description is
effective.
Clifford was secret and not accessible when it was filed because it was not published
Although Whitford could not have known about the invention because it was secret, it does not matter,
because he should not benefit from the delay of the patent office.
Clifford did everything that he could to disclose and make the patent public through the PTO means.
The date that is used for 102(e) is the filing date if it is issued and eventually became public.
They are claiming different things, but that doesnt matter. Question is whether first inventor disclosed the
invention, even without actually claiming the invention.

102(g)(2)
Secret Prior Art
Can defeat novelty even though it is virtually inaccessible to the public. Only required that the use not be
abandoned, suppressed, or concealed.
Who What When Where
Third Party Invented invention that Before date of USA
was not abandoned, invention
suppressed, or
concealed.
Requires invention to be conceived AND reduced to practice. Only raised using invention IN THIS
COUNTRY.

Thomson, S.A. v. Quixote Corp. (398) [Third Party Secret Art]

Make CDs with optical storage.
Thomson invented in Aug. 1972 and sued Quixote.
Quixote says the claims were anticipated by a non-party MCA
MCA was not patented, therefore it was not 102(e) because it was not published or patented
102(g)(1) is an invention that was made in this country by another who had not abandoned, suppressed or
concealed it.
Could be considered to be abandoned, suppressed or concealed if reduced to practice and the inventor
took no steps to make the invention publically known.
Does not matter if the MCA company publically disclosed, as long as they invented it first
102(g) requires actual reduction to practice with the invention built
Corroboration is required of any witness whose testimony alone is asserted to invalidate a patent,
regardless of his level of interest.
14
 Corroboration is required only when the testifying inventor is asserting a claim or derivation or priority of
his or her invention and is a named party, an employee, or in a position to substantially gain from the
outcome of a patent invalidation.
Fujikawa v. Wattanasin (449) [Priority exception invented first reduced to practice second. Did not
conceal.]
Senior party = first person to file in the patent office
Fujikawa had activities over seas before 1996 so could only rely on filing date as of Aug. 1987 because
the Third Party Prior Art is only effective in this country.
Wattanasin filed after Aug. 1987 but was first to conceive
Conceived in 1984 and picked up the project again in Jan. 1987
Completed testing in rats to show reduction to practice to show that the drug worked for its intended
purpose.
Needed to show there was reasonable diligence from just before Fujikawas conception through to
Wattanasins reduction to practice because conceived before Fujikawa.
Also claimed that they suppressed or concealed the invention
Would need to have done it:
(1) deliberately
Requires evidence that they intentionally delayed filing in order to prolong the period during
which the invention is maintained a secret to extend the patent term. More than just passage of
time.
(2) took too long delay in filing a patent application
Determined that 17 months was not waiting too long

Priority [ 102(g)]
First to invent system, meaning that a party that was second to file may be awarded the patent if they can prove
they were the first to invent during an interference proceeding.
Priority is given to the first to reduce the invention to practice, except:
(1) an inventor who was second to reduce to practice but first to conceive can still get priority if they exercise
reasonable diligence in reducing the invention to practice from a time just prior to conception;
AND (2) a second inventor will be awarded priority where the first inventor abandoned, suppressed, or
concealed the invention after reducing it to practice.
102(g)(1) interference can use foreign act within these dates
102(g)(2) Third party prior art still in this country NOT foreign act prior art. Not expanded to foreign secret
prior art.

Conception
What is required to prove conception more than I had the idea first.
Fiers v. Revel (424) [code is conception; not the method]
Three-way interference all saying they were first to invent the DNA and code for interferon (BIF)
Sugano priority was affirmed or Sugano
Claimed priority of a Japanese filing date 3/19/1980
Revel
Wanted to claim benefit of 11/21/1979 Israeli filing date
Fiers
Entitled to the benefit of 4/3/1980 British filing date
Was trying to say that conceived of it earlier to get around the prior art; failed to establish
conception because success was not assured or certain until the gene was in fact isolated and the
sequence was known
Conception is a question of law that is reviewed de novo.
Conception does not occur unless one has a mental picture of the structure of the chemical, or is able
to define it by its method of preparation, its physical or chemical properties, or whatever
characteristics sufficiently distinguish it.
15
 Have a policy of promoting disclosure of the invention, not research plans. One does not need to
carry out the invention before filing a patent application, one does need to be able to describe that
invention with particularity.
Burroughs Wellcome Co. v. Barr Laboratories, Inc. (428) [unique cell line testing]
BW got the patent. Ruled patents were not invalid and were infringed by Barr. Barr tried to argue did not
have proper conception because excluded co-inventors from NIH.
NIH had a unique cell line because their cell line mimicked the immune problems.
Inventor is the person who conceived of the inventor
Definite permanent idea
Was present here and was only confirmed by the NIH testing meaning BW had the conception.
Complete and operative invention as hereafter to be applied in practice
Conception the formation in the mind of the inventor, it is mental which is why it requires
corroboration
It is completed only when the idea is so clearly defined in the inventors mind that only ordinary
skill would be necessary to reduce the invention to practice without extensive research or
experimentation.
For conception, need not know that his invention will work to be complete.
Only need to show he had the idea; the discovery that an invention actually works is part of the
reduction to practice.
Reduction to Practice
Two types:
Constructive when the patent application is filed
Policy is to encourage early disclosure
Actual built it
Shown to be suitable for its intended purpose when the invention is physically made and tested
DSL Dynamic Sciences Limited v. Union Switch & Signal, Inc. (442) [Actual reduction of couplers]
The case is specifically about actual reduction to practice
Union claimed conception in January 1983 and completed reduction to practice in May 1983. They filed
in 1984. DSL filed in Sept. 1983.
DSL tried to argue that the reduction to practice was not complete because it was not performed in the
correct environment
The tests need to show that the invention worked for its intended purpose
Tests performed outside environment can be sufficient when conditions are sufficiently similar to
those in the intended environment
The tests were for the caboose rather than the freight car. They needed to sustain 20 Gs of stress
and the tests showed that they were able to sustain 15 Gs which was found to be sufficiently
similar for tis intended purpose.
For reduction to practice to work must show
(1) it was for the intended purpose
(2) if that was not the intended purpose, the tests performed must be in sufficiently simulated
conditions to adequately show reduction of the invention to practice

16
 104 Invention made abroad
NAFTA country changed rules of 104 to allow you to rely on acts in Canada and Mexico to show
conception/RTP as of December 8, 1993.
In 1996, WTO countries were added where acts could show conception/reduction to practice as of January 1,
1996.
Using Foreign Priority For Prior Art Purposes Under 102(e) and (g)
The use of 119 and 120 with 102(e) and (g)
119 give priority rights in the United States from a foreign country application if you filed within the year
The person making the argument is using them to challenge patent claims, not defend them. Wants patents in
issue to be prior art on some date earlier than when the patent published
Hilmer I (408) [ 102(e) + 119]
Both parties used 119 to get priority
Habicht Swiss 1/1957
Hilmer Germany 7/1957
Habicht US 1/1958
Hilmer US 7/1958
Hilmer trying to say that his US application will have the same effect as if it was filed in 7/1957 and 102(e)
says filed in the United States and Habichts date would then be considered after and wouldnt be prior art
Government trying to argue that combine 119 with 102(e) to make the Swiss 1/1957 date before the July
1957 date.
Court determines 119 give priority but it does not give prior art
Hilmer II (414) [ 102(g) + 119]
Same as Hilmer II where it is required to be in this country for 102(g)
119 does not remove the in this country limitation of 102(g)
Believe Congress does not wan knowledge and acts in a foreign country to defeat applicants rights
BOTH HILMERS ARE NO LONGER GOOD LAW UNDER THE AIA.
Derivation [35 U.S.C. 102(f)]
Requires the patent application to be filed in the name of the true inventor
Meaning they cannot have derived the invention from another source
Gambro Lundia AB v. Baxter Healthcare Corp. (419) [Dialysis recalibration not derived from another]
Gambro got a patent and sued Baxter. Baxter tried to invalidate the patent saying that it was derived from
Repgreen.
Derivation standard
1) Conception by another
The invention was doing recalibration during dialysis and the Wittingham proposal from Repgreen
did not have to do with recalibration during dialysis
Oral testimony required corroboration
The expert said that no one skilled in the art would have understood the passage from
Wittinghams proposal to disclose recalibration during dialysis
2) Communication of conception to patentee
The communication was not present.
The communication would need to enable an ordinary mechanic, without the exercise of any
ingenuity and special skill on his part to construct and put the improvement in successful operation

17
Section 102 UNDER THE AMERICA INVENTS ACT (AIA)
Switched to the first to file system on March 16, 2013 for any invention with claim of 3/16/13 or after.
Priority dates before 3/16/13 are under Pre-AIA rules

New 102
(a) A person shall be entitled to a patent unless
(1) The claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise
available to the public before the effective filing date of the claimed invention; or
(2) The claimed invention was described in a patent issued under section 151, or in an application for patent or
deemed published under section 122(b), in which the patent or application, as the case may be, names another
inventor and was effectively filed before the effective filing date of the claimed invention.
102(a)(1) like Pre-AIA 102(a) and 102(b) talks about disclosures, publications, public use with available to the
public
102(a)(2) like Pre-AIA 102(e) replaces 102(e) because talks about earlier applications
Changes the available prior art in three ways:
1) Eliminates the one year grace period during which an inventor can file for a patent after disclosure
2) Disclosure can occur anywhere in the world, not only this country
3) Effectively filed includes foreign filing dates (reverses Hilmer) now serving as priority

Hypo:
4/1/13 A conceives and reduces invention to practice
6/1/13 B discloses
8/1/13 A files application barred by New 102(a)(1) because B disclosed and is prior art

Hypo:
4/1/13 A conceives and reduces invention to practice
6/1/13 B files US application, discloses
8/1/13 A files application barred by New 102(a)(2) because B described in another filed application before the
filing date and is prior art

Hypo:
4/1/13 A conceives and reduces invention to practice
5/1/13 A discloses
6/1/13 B discloses
7/1/13 A files application earlier disclosure may be prior art, but if A discloses, not prior art
If prove B got it from A then not prior art New 102(b)(1)(A).

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 (b) EXCEPTIONS
(1) A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to
the claimed invention under section (a)(1) if
(A) The disclosure was made by the inventor or joint inventor or by another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor; or
(B) The subject matter disclosed had, before such disclosure, been publically disclosed by the inventor or
joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor
or a joint inventor.
(Applies if they are identical then not prior art but if they are similar, then it would be.)
(2) A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if
(A) The subject matter disclosed was obtained directly or indirectly from the inventor or joint inventor;
(B) The subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2),
been publically disclosed by the inventor or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint inventor; or
(C) The subject matter disclosed and claimed the invention not later than the effective filing date of the
claimed invention, were owned by the same person or subject to an obligation of assignment to the same
person.

102(b)
(1) own disclosure from inventor not prior art
(A) if derived from the inventor then not prior art
(B) if A discloses earlier even if cant prove B derived from A, Bs disclosure is not prior art

(2) invention in patent issued

(A) from inventor
(B) previously disclosed
(C) unity of inventors

Hypo:
6/1/13 B files in Japan
8/1/13 A files provisional
6/1/14 B files nonprovisional in the United States
8/1/14 A files nonprovisional

Under the New AIA 102 B is prior art to A. Old rules A would be to B.

19
Chapter 5: Nonobviousness [35 U.S.C. 103]
The requirement casts a broader net and recognizes that the limitations of a claimed invention may be scattered
throughout more than one prior art reference, and it would be obvious to a person of ordinary skill in the art to
assemble these elements in the form of the claimed invention
Common law principle since the 1850s in Hotchkiss v. Greenwood (the doorknob case)
Substituted the clay or porcelain knob for a metallic knob and although it was new, the court denied the patent
because absence of that degree of skill and ingenuity which constitutes essential elements of every invention.
Added an additional patentability hurdle where needed to display more ingenuity and skill than that possessed
by the ordinary mechanic.
The claimed invention must be significantly different, not necessarily better.
Inventors are rewarded for having invented something even if it is not as good. Not rewarded for standing still or
for retrogressing
Purpose is to promote the progress of useful arts

Graham Framework
Graham v. John Deere Co. (484) [requires factual inquiries]
The invention was a plow that implemented a spring system that makes it pivot and it absorbs vibrations if it hits
rocks. The invention was considered to be obvious.
Standard of Nonobviousness PA 103(a): An invention (considered as a whole) is not patentable if, at the
time it was made, it would have been obvious to a person having ordinary skill in the art with ordinary
creativity. To make this determination, a court must ascertain:
(1) the scope and content of the prior art;
(2) the differences btw the pertinent prior art and the claims ascertained;
(3) the ordinary level of skill in the pertinent art at the time of the invention;
Ordinary skill is used because if it was expert skill, the standard would be too high
Needs to be a change that would be obvious to someone NOT in the field.
Need to avoid hindsight bias
(4) secondary considerations.
Commercial Success
Long felt but unresolved needs
Failure of others
Prior Cases
Hotchkiss If mere substitution, does not get a patent because not significant enough change to be an
invention
If it is a change that an ordinary mechanic can do, then it is not advanced enough.
Cuno requirement for invention where needed to have a flash of genius
The A & P Case bringing components together was not patentable unless synergy where whole is greater
than the sum of its parts
Calmar, Inc. v. Cook Chemical Co. (495)
Because the Graham standard was too loose, adopted the Teaching, Suggestion, or Motivation test.
Removes the Flash of Genius test.
Trying to remove the 1952 Anti-patent sentiment
Rationales for Rejecting Claims using Obviousness:
(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 choosing from a finite number of identified, predictable solutions, with a reasonable
expectation of success;
(6) 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 would have been predictable
to one of ordinary skill in the art;

20
 and (7) some teaching, suggestion, or motivation (TSM!) in the prior art that would have led the PHOSITA
to modify the prior art reference or to combine prior art teachings to arrive at the claimed invention.
United States v. Adams (503) [water battery] (teaching away non obvious)
Water activated battery where you add water and the battery started to work
Takes it to the government and they believe it wont work and then they started making it, which was
infringing on Adams patent
Government then tried to claim that it was obvious to create this in light of the prior art references
Was not obvious in light of the prior art
The prior art rejected what Adams was doing by teaching away and experts did not believe the invention
would work
One reasonably skilled in the art would not have combined the components
Some of the prior art the way it was taught was inoperable, meaning it was not a prior art reference
Was not considered to be a substitution because not equivalent operating conditions
Adams invention provided valuable advantages that were unexpected because surpassed other batteries
Even though claims 1 & 10 did not mention a water electrolyte, a stated object of the intention was to provide a
battery rendered servable by the mere addition of water.
The Scope of the Prior Art
Analogous v. NonAnalogous Art
If art is nonanalogous then it can be kept out of the 103 analysis.
Art is analogous if:
Is in the same field of endeavor as the invention?
If not, whether the reference is reasonably pertinent to the particular problem facing the inventor before
making the invention
In re Clay (518) [Extraction is not storing oil]
Storage of hydrocarbons where had dead space in the container blow the outlet port
Clay tried to argue that the use of the Sydansk patent against him was not analogous art
Claimed that they were not in the same field because although both have to do with oil, one was for
the extraction of oil and one was for the storage
They would not look at that reference for extracting because that is not a reasonably pertinent to
the problem facing the inventor for the storage of hydrocarbons.
In re Paulsen (520) [hinge references for computers]
Claim computer shell configuration and the issue here is over the hinge
The hinge references were not in the same field, but hinge references would be reasonably pertinent to
the problem facing the inventor and the inventor would have referenced them
102/103 Prior Art
(e) Secret prior art can be used even though the prior art is not available. We dont want PTO delays to
trump nonobviousness. See Hazeltine Research.
(g) prior invention of another This is a little problematic because the inventor has a reliance interest in
the patenting of their invention and now we are preventing that granting because of an absolute
nonobviousness bar referencing 102(g) prior art.
Modern View: But the Supreme Court appears to have removed this limitation, and now seemingly would
support consideration of any prior art when making obviousness determinations. See KSR Intl Co. v.
Teleflex (Under the correct analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining the elements in the manner
claimed) [at 676].
Exception Applicants Prior Art PA 103(c): Prior art that only qualifies as prior art under 102 (e),
(f), or (g) may not be used to disqualify an application on obviousness grounds when said prior art is owned
or assigned to the same person.
Hazeltine Research, Inc. v. Brenner (523) [ 102(e) Prior Art used with 103]
New improvement of a microwave switch and the examiner rejected it by relying on Wallace although it
issued after filing, but it was pending beforehand.
Regis tried to argue that it was copending and it was not publically known until after filing, but the
argument did not work following similar reasoning to the decision in Milburn saying that the PTOs delay
in publishing should not cut down the effect of the first inventor.
21

In re Bass (526) [ 102(g) Prior Art used with 103]
Affidavits can be used to antedate and swear behind the reference with 131
Question of whether 102(g) prior art can be used in combination with another reference for a 103
rejection
The party was having their own work cited against them and the court said that they could be
combined
If there is not unity of inventorship, then it is considered to be an invention of another.
103(c)(1) says if prior art owned by the same person or assignment, then cant be cited against
them.
OddzOn Products, Inc. v. Just Toys, Inc. (541) [ 102(f) Prior Art used with 103]
Design patent on a vortex ball. Just Toys said that they were confidential designs that were disclosed to
inventor that could maek the invention obvious
Made an argument under 102(f) that two confidential designs disclose when combined with prior art
would lead to a 103 rejection meaning it was not identical but was obvious
102(f) information is typically not public disclosures
Statute says that it is not prior art under 102(f) if there is common ownership.
If there is not common ownership, then it is prior art.
The Content of the Prior Art
Asking what the prior art must contain to render an invention obvious under 103.
References are permitted to be combined for 103 but the references must
1) suggest to a person having ordinary skill in the art (PHOSITA) that he should make the invention
Suggestions could come from:
(1) the references themselves
(2) from knowledge of those skilled in the art that certain references, or disclosures in the references,
are known to be of special interest or importance in the particular field
Does not need to be in the disclosure could be from teachings that one of ordinary skill in the art
would be presumed to know
And (3) from the nature of a problem to be solved, leading inventors to look to references relating to
possible solutions to the problem.
2) and once made by one of ordinary skill in the art would have reasonable expectation of success.

22
 Person Having Ordinary Skill In The Art (PHOSITA) (561)
It is a hypothetical person who has ordinary skill in the art to which the claim invention pertains to serve as a
standard of patentability. Therefore subjective motivations of inventors is not material.
Ordinary factors include:
1) 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) education level of the workers in the field
The breadth of the knowledge is not only in the immediate field, but in all fields nearly akin to that field
McGinley v. Franklin Sports, Inc. (547) [instructional pitching baseball]
The pitching ball showed specific pitches where you were able to tell the difference between left and right and
the markings were egg shaped to show pointed part pointed towards the thumb
Jury found that the claims were not invalid, trial court set aside the verdict on validity on a JMOL. Fed. Cir.
Reverses saying that a reasonable jury could have found that the claims were not invalid so reversed trial
court.
McGinley said that there was no motivation to combine the prior art and even that the Morgan and Pratt
references teach away from combination
The court looks to explore this and if the jury was able to conclude that the references should not be
combined, the patent cannot be invalid for obviousness
To prevent hindsight invalidation of patent claims, the law requires some teaching, suggestions, or
motivation to combine cited references
Claims that Pratt only wants the placement of fingertips and not the full finger and to fill in the phantom
lines would defeat the rotation arrows which was necessary to the invention
KSR v. Teleflex (566) [adjustable gas pedal]
District Court found that the patent was obvious under the TSM test.
The Federal Circuit reversed saying that they failed to make fidings as to the specific understanding or
principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of
the invention to attach an electronic control to the support bracket of the Asano assembly
SCOTUS rejected the rigid approach by the Federal Circuit and found that the patent was obvious
SCOTUS said you need to look at a broader view to include any problem addressed by the patents
subject matter where claims provide a solution, rather than just looking at the problem the patentee was
trying to solve
Common sense teaches that familiar items may have obvious uses beyond their primary purposes and a
person of ordinary skill may be able to fit the teachings to multiple patents. Anything that they were
working on or interested in should be considered as potentially relevant
Obvious to try is obvious if there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known operations within their technical grasp.
Depends on (1) the predictability of the art; (2) the number of parameters available to try; (3) the
difficulty of trying; and (4) movement within the filed pointing towards trying

23
 Secondary Considerations
Include
Commercial success if my invention was obvious, why didnt any of my competitors have success making
the invention given its significant consumer demand
Needs a connection between what was patented and the commercial success and that it is successful in
comparison to the other products on the market
Pentec, Inc. v. Graphic Controls Corp. (576) [pens]
Pentec accused of infringement, but filed declaratory judgment saying not infringing GC patent
Issue of obviousness
The GC products were having commercial success
Proven by showing a connection/nexus between what you patented and the commercial
success.
Sold twice as many pens as the rest of the industry
Pentec was trying to say there was no nexus of connection between the patent and the success
Claiming was successful because was the market leader with strong advertising, not because of
the patent
Long-felt need It has been desired in the industry for a while and others have tried and failed to satisfy the
need, which may imply nonobviousness
Need to look into the need and the failure. Maybe people failed because were not willing to commit time
and resources to it
Need to identify the need, can be difficult.
Determination of how long this need was present.
Copying claim that a competitor copied the invention manifesting nonobviousness
Better evidence when they initially tried to design around it
But product could be given low priority
Failure of others
Licensing/acquiescence Accepting a license is implicit recognition that the patent is nonobvious
Would not pay royalties on a patent unless it thought that the patent was valid

Chapter 6: Utility [35 U.S.C. 101]

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this
title.
In order to be patentable, the invention must be useful. As a part of the quid pro quo, in order to get protection of the
invention, the invention needs to provide utility to society. Issue is if dont give patents to encourage disclosure, may
not know what is out there
The invention must:
1) be operative
2) function for its intended purpose
The purpose may not be immediate and rather may be served in the future
Utility Standard PA 101: An invention must be useful (or have utility) to be patentable. Such utility
must be specific, substantial, and credible. See Brenner v. Manson (Steroid held not to be patentable for
lack of utility, where applicant claimed steroid and process for making it, but disclosed no beneficial use to
society) [223].
Specific: The utility claimed must be specific to the subject matter claimed and can provide a well-
defined and particular benefit to the public. This contrasts with a general utility that would be applicable
to the broad class of the invention [239n6]. See In re Fisher (Claimed utility for ESTs of identifying
polymorphisms not specific b/c all ESTs can be used to do this) [241] and MPEP 2107.01 [*22].
Similarly, throwaway or insubstantial uses (e.g. use of invention as landfill) do not satisfy the utility
requirement.
Substantial: The utility must define a real world use. Utilities that require or constitute carrying out
further research to identify or reasonably confirm a real world context of use are not substantial

24
 utilities [240n6]. See In re Fisher (Claimed utility for ESTs not substantial b/c ESTs are no more than
research intermediates, useful for conducting further research on genes) [241] and MPEP 2107.01 [*23].
Generally Useful: But the invention merely needs to be generally useful, not more useful than
similar inventions. See Lowell v. Lewis (Patent for a novel pump upheld, even though it was not more
useful than existing pumps) [214].
Known Use at Time of Filing: The claimed utility must provide some immediate benefit to the
public. Therefore, the utility must be known at the time of filing. As stated by Brenner, A patent is
not a hunting license [at 227]. See In re Ziegler (Patent on polypropylene from 1954 invalid b/c the
invention had no known use at the time) [229n1].
Credible: The utility of an invention must be credible. If the utility asserted for an invention makes
incredible claims that contravene generally accepted scientific principles (e.g. perpetual motion
machines), the PTO will reject the claims under PA 101 as drawn to inoperable subject matter.
Historical Approach to Utility
Brenner v. Manson (666) [patent not a hunting license]
The patent was for a specific type of chemical
A patent cannot be presumed to be useful just because it is closely related to another compound that is
known to be useful
An adjacent homologue of a steroid that demonstrated utility does not provide an adequate basis for
overriding the determination that the utility requirement has not been met
Disclosure and secrecy is not a problem if the inventor cannot use it. If there is no use, there is every
incentive to make it known to those who are able to form a use.
It is important to know the use of the invention now, not in the future. A patent is not a hunting license.
Three arguments:
Because one of the homalog
CONCURRENCE/DISSENT: Believes that encouraging disclosure is vital to progress
Modern Approach to Utility
Two step Brana test
First, PTO has the burden of challenging the presumptively correct assertion of utility in the disclosure
Second, only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably
doubt the asserted utility does the burden shift to the applicant to prove utility.
In re Brana (672) [in-vivo testing in mice proves utility]
Applicant argued there is utility saying the anti-tumor drug was useful when testing in vivo in mice
If there was utility in the specification then it is presumed to be correct. The burden then shifts to the
patent office and they did not rebut the presumption.
Say that one skilled in the art could see the usefulness and they proffered sufficient evidence to
convince one of skill in the art of the asserted utility
The applicants were saying that their compound was more effective than the compounds previously disclosed
to overcome the 103 rejection.
The Examiners had issue with the fact that the applicants specification failed to disclose a specific disease
against which the claimed compounds are useful and therefore absent undue experimentation, one or ordinary
skill in the art was precluded from using the invention.
Applicants point out that the diseases they are treating are not valid because they injected the disease into
mice, but if the applicants were forced to wait until an animal naturally developed it before testing, there
would be no way to test this on a large scale.

Chapter 7: Statutory Subject Matter [35 U.S.C. 101]

To be patentable, the invention must fall within one of the four classes of statutory subject matter:
Processes
Machines
Manufactures
Compositions of matter
Constant debate over whether 101 should be strict considering even if it passes 101, it could be barred under
102 or 103.
Adding a computer could be considered obvious
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 Computer-Related Inventions and Business Methods
Gottschalk v. Benson (733) [binary code computer conversions]
Method of converting binary coded decimals into pure binary numerals
The question is whether algorithms should be patentable
Claim 8 in the patent is a sequence of steps that can be done by hand and they are trying to patent the way
of doing it.
Dont want patents on mathematical formulas because they would pre-empt use in every substantial
practical application
Need to take the exceptions of Law of Nature, Natural Phenomena, Mathematical Formulas, &
Abstract Ideas and apply them in a new and useful way.
This was determined to not be patentable, btu not specifically precluded for using the services of a computer.
Basic tools of scientific and technological work are not patentable because the monopolization of those
tools through the grant of a patent might tend to impede innovation more than it would tend to promote it
Diamond v. Diehr (742) [Method of curing rubber]
There was a problem in the prior art PROCESS of determining how long to cure the rubber for. The new art
use a computer to track temperature and monitor the temp in the mold and once it reaches the time it should
be opened.
The Arrhenius equation is used on the computer, but the being able to open the press at the right time is
new and this resolved the problem.
Determined that a mathematical formula is like a law of nature which is not patentable subject matter, BUT
here do not seek to patent the mathematical formula and do not seek to pre-empt the formula
Want to use the formula with other steps in the process. The process is not unpatentable simply because it
contains a law of nature or a mathematical algorithm, the APPLICATION of one of these to a known
structure or process mat deserve
DISSENT: Believed that this is the same issue talked about previously of putting the formula in the machine
and it is only an application of the equation. Believes that computer programs should not be given patent
protection because of the policy construction that they Court is not authorized to address.

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 State Street Bank and Trust Co. v. Signature Financial Group (754) [Hub and Spoke Business method]
Data processing system that worked by pooling assets into a hub where individual entities are putting their
investments together to save on expenses
Abstract ideas are not patentable unless they produce some type of practical application, a useful, concrete
and tangible result.
Determined that this invention fell into either the machine or process of 101, but need to look into the three
unpatentable categories of laws of nature, natural phenomena, and abstract ideas.
Hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of
mathematical calculations into a final share price, constitutes a practical application of a mathematical
algorithm, formula, or calculation, because it produces , a useful, concrete and tangible result.
Should focus on the essential characteristics of the subject matter, particularly its utility, not the four
categories.
One example is in Alappat with the smooth waveform.
Determined there is no such thing as a business method exception. Whether the patent claims are too broad to
be patentable is not judged under 101, but rather under 102, 103, and 112.
Bilski v. Kappos (762) [hedging risks]
Invention that us focused on hedging for buying and selling to protect against risk
Financial method to buy things to protect position in case prices fluctuate
SCOTUS says that the machine or transformation test is not the only test, because it would leave patentability
of entire areas of inventions as unsure.
Machine or Transformation test states patent-eligible under 101 if:
(1) it is tied to a particular machine or apparatus
Or (2) it transforms a particular article into a different state or thing
It would create uncertainty as to the patentability of software, diagnostic medicine techniques, etc because
they would not be covered as a machine or a transformation
Business methods in light of 273 saying that a method could be a method for conducting business
should be under 101
DISSENT: Stevens believes that there should be no patents on business methods
Mayo Collaborative Serv. V. Prometheus Labs, Inc. (printed) [drug administering requires something
more]
A method for determining the dosage of drugs to deliver for auto-immune disease
Each persons body breaks down drugs different and therefore require other doses
The court claims that this is a law of nature, but they dont apply the law of nature and transform it
into something more than a monopoly over the law of nature. Prevents the underlying building block
concern.
To transform a law of nature into a patent-eligible application of such a law, the patent must do
more than simply state the law of nature while adding the words apply it
Federal Circuit says that it was transforming the body or the blood, but SCOTUS did not
agree because the machine or transformation test is not the only test.
Must contain other elements or a combination of elements, known as an inventive concept
sufficient to ensure that the patent in practice amounts to significantly more than a patent
upon the natural law itself
The prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment

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 The claims have three steps and considering the steps individually and as a whole as an ordered
combination, there is nothing that is not already present.
Administering tells doctor to administer drug to the patient
Determining measure the metabolite levels in the patients blood
Wherein describing the metabolite concentrations above which there is a likelihood of harmful side
effects and below which it is likely that the drug dosage is ineffective
Alice Corp. Pty. Ltd v. CLS Bank Intl (printed) [settlement risk is not something more]
Patent for settlement risk where there is fear of a corporation or entity not fulfilling the transaction
SCOTUS is concerned about granting a patent on the abstract idea because this concept would not be able to
be used in other fields and would impede progress and tie up human ingenuity
Need to determine
(1) if they are trying to patent an abstract idea or other exception making the patent ineligible
(2) if it does, see if the inventive concept transforms the claim into a patent or more than just an abstract
idea
The court determined that this was an abstract idea so it was barred by 101. The next step was to determine
whether there was something more and they determined there was not something more because they were
only using a computer and that does not add something more.
This is considered to be a fundamental economic concept and needs additional features to ensure that the
claim is more than a drafting effort designed to monopolize the abstract idea
Biotechnology Related Inventions
Diamond v. Chakrabarty (706) [non-natural man made oil eating bacteria]
The invention was a non-natural bacteria able to breakdown crude oil
The PTO rejected the claims for the bacteria claiming that they were (1) products of nature and (2) living
things should be barred under 101
The Legislative History, specifically the committee reports meant to include anything under the sun made by
man
Discussion of whether there should be a monopoly over something that is alive
Could be argued to be morally wrong
If something is made in the body it could be argued to be it is natural
Could be argued that it was discovered and not made and not transformed
This was considered to be patentable nonnatural having a distinctive name, character and use
Assn for Molecular Pathology v. Myraid Genetics, Inc. (printed)
Discovered that certain genes (BRCA1 & 2) with mutations lead to increased risk of breast cancer
The DNA was determined to be natural and not patentable, but the cDNA is not natural because it is not
naturally found in the body. It is the compliment of the mRNA. cDNA is the DNA without the introns.
Myriad did not create or alter the genetic information of the DNA they are seeking to patent. The
contribution was the location and order of the nucelotides
cDNA is not a product of nature
Funk Brothers mixture of naturally occurring strains of bacteria were not held to be eligible because the
patent holder did not alter the bacteria in anyway
Court does not recognize the argument that the PTO has past experience in awarding gene patents and
therefore should be given deference.

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Chapter 8: Infringement
Applications filed on or after November 29, 2000, the patent applicant enjoys provisional rights beginning on the date
the application is published pursuant to 35 U.S.C. 122(b) and ending on the date the patent issues.
The patentee must prove that the third party had actual notice subsequent to publication and the invention claimed in
the patent is substantially identical to the invention as claimed in the published patent application
Remedy for pre-grant use is reasonable royalty
Without authority during the term of the patent therefore, infringes the patent.
Five basic rights of exclusion defined by the claims. Claims are the measure of the patentees right to exclude
(1) making
(2) using
(3) selling
(4) offering for sale
(5) importing
Direct v. Indirect
Who the patentee is able to sue
Direct patentee may bring an action against a defendant who himself is committing acts that infringe in and
of themselves
Indirect patentee may bring an action against a defendant whose acts do not infringe in and of themselves,
but that contribute to or induce acts of direct infringement by some third party
Claim Interpretation
Something can mean whatever one chooses it to mean. Lexicographer needs to be defined in the spec.
Disputed language
Specialized technical terms
Elementary nontechnical words, such as on or a
Spatial and relational concepts, such as integral
Approximations, such as about and substantial
Procedure: Judge, Jury, and Appellate Review
Markman v. Westview Instruments, Inc. (806) [Markman Hearing claim construction]
Concluded that claim construction is properly viewed solely as a question of law for the court and that the
construction given the claims is reviewed de novo on appeal
Argument for judges: trained in the interpretation of documents and law
Provides consistency and letting juries construct would ill suit uniformity
Argument for jury: members of the public meant to be on notice so should determine the
interpretation
Debate the meaning of inventory
Markman hearing
Early design the case around it
Late prolong and drag it out to beat smaller company; want discovery beforehand when argue facts
Procedure: Interpretive Approaches and Evidentiary Sources
Distinction between the treatment of evidence.
Intrinsic evidence what is in the patent file
written description, claims, drawings, and prosecution history
Extrinsic evidence all evidence external to the patent and prosecution history,
Expert and inventor testimony, dictionaries, and learned treatises.
Vitronic Corp. v. Conceptronic Inc. (823) [intrinsic before extrinsic]
LOOK TO INTRINSIC FIRST. IF HAVE MEANING AND NOT AMBIGUOUS; DONT NEED
EXTRINSIC
Read SRT to mean peak temperature to be consistent with the specification
Debating meaning of solder reflow temperature
Liquidus where it starts to melt
Peak completely melted
Reasons for Intrinsic: looking in the document of what they meant by the words. (subjective)
Reasons for Extrinsic: What common meaning would be (objective)
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 Public notice: purpose of the claims is to give the public notice of what the scope of the patent is
Doctrine of Equivalents
Courts have found infringement when an accused infringing device (or process) is equivalent to that claimed
in the patent
Meant to prevent an infringer from stealing the benefit of the invention.
Graver Tank v. Linde Air Prods. Co. (844) [insubstantial changes/triple identity test]
Substituted Mn in place of Mg, which was not an alkaline earth metal
There was not a literal infringement, so the claim would have to be that they were equivalent
Patentee argues that an insubstantial change may not fraud the public.
Would not be fair to the patentee to allow insubstantial changes. Encourage patents and disclosure,
but a strict view would discourage patenting.
Shouldnt allow poor drafting to limit the scope. Should allow the doctrine of equivalents to
protect the scope around the patent claims if the language is inadequate.
Triple Identity Test: (need all 3)
(1) substantially the same function
(2) in substantially the same way
(3) to produce substantially the same result
Equivalency is measured based on the context of the patent, the prior art, and the circumstances of the
case
Important to know whether persons reasonably skilled in the art would have known of the
interchangeability of the ingredient
DISSENT: claimed cant give more than what is in the scope of the patent. Purpose of the claims are to
limit the invention. They could have made it broader but they didnt, so they shouldnt be able to make
adjustments. Also says could get a reissue to adjust scope.
WarnerJenkinson Company Inc. v. Hilton Davis Chemical Co. (851)
Process of getting high purity dyes
The issue is over the change in the claims that occurred during prosecution where they set the pH range
from 69 where the accused infringement is at 5.
Petitioner tries to argue that they did not add DOE after the 1952 Act so didnt intend to include
Court determines the 1952 act is not substantially different so did not purport to eliminate it
Determined need to look at each element individually to keep the DOE in check
Cannot be used to eliminate it entirely. Need to have that limitation or an equivalent of that
limitation.
Prosecution History Estoppel
If changes are made during prosecution, you are held to those changes
By narrowing the claim, you are estopped from going back to the broader claim
Court says need to look into why it was amended. Amending does not automatically estop you,
need to see why amended

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