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Novelty: What’s New? Plenty!

Novelty: What’s New? Plenty!. Patent Law Prof Merges 9.25.2012. Agenda. Basic concepts and terminology First to Invent (1952 Act) vs. First to File (AIA – patents FILED after 9/16/2012) Some details on 1952 Act caselaw. Three Main Issues Under Novelty.

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Novelty: What’s New? Plenty!

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  1. Novelty: What’s New? Plenty! Patent Law Prof Merges 9.25.2012

  2. Agenda • Basic concepts and terminology • First to Invent (1952 Act) vs. First to File (AIA – patents FILED after 9/16/2012) • Some details on 1952 Act caselaw

  3. Three Main Issues Under Novelty • What is the prior art: what is a “reference”? • Timing Issues: What is in, and out, of the “prior art”? • Identity standard: how similar does a prior art reference have to be to anticipate (destroy novelty, invalidate) a patent?

  4. Novelty § 102 A person isnotentitled to a patent if the invention was: • in theprior art(as defined by § 102 (a), (e), (g)) • barredunder § 102 (b), (c), (d)

  5. Key Distinction • Though both covered by § 102, novelty and statutory bars are very different • Novelty: is it new? • Statutory bars: did you file before the cutoff date? Did you file on time?

  6. Novelty (Anticipation) [§ 102(a)] Versus Statutory Bars [§ 102(b)] • Novelty/Anticipation concerned with NEWNESS – is it original to the patent applicant/patentee? • Statutory Bars concerned with TIMELINESS– did the inventor file soon enough?

  7. § 102. Novelty and loss of right to patent A person shall be entitled to a patent unless (a) the invention was known or used by others … before the invention thereof by the applicant for patent, or (b) the invention was patented or described in a printed publication …, more than one year prior to the date of the application for patent in the United States, or . . . .

  8. What is the key difference? • The CRITICAL DATE is different for novelty vs. the statutory bars • Novelty: date of invention • Statutory bars: Filing date minus one year

  9. JONES CLAIM 1: ELEMENTS Rotating handle at end of bar U-shaped bar Cutting element attached to bar Base, with passageway

  10. Sample Publication (by Smith) in the PRIOR ART Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various round, and____ . ______________ _______ Exciting : stainless steel blades, , ___________ ________ ____________________ . The wire slides into a convenient For tightened wire designs, cutting bar shapes: U-shaped, new cutting elements tightened wire passageway in the base. attached to the bar tightening can be achieved by rotating the handle.

  11. Cheese Industry Today New Trends in Slicers by J. Smith NO PATENT GRANTED ________________ New innovations _______________________________ ______________various round, and____ . ______________ _______ Exciting : stainless steel blades, , ___________ ________ ____________________ . The wire slides into a convenient For tightened wire designs, NOVELTY REQUIREMENT NOT MET: cutting bar shapes: U-shaped, new cutting elements tightened wire attached to the bar passageway in the base. tightening can be achieved by rotating the handle. Claim Elements Claim Elements in Publication Rotating handle at end of bar Rotating handle at end of bar Cutting element attached to bar Cutting element attached to bar Base, with passageway Base, with passageway U-shaped bar U-shaped bar

  12. Sample Publication: Revised Cheese Industry Today New Trends in Slicers by J. Smith ________________ New innovations _______________________________ ______________various round, and____ . ______________ _______ Exciting : stainless steel blades, , ___________ ________ ____________________ . The wire slides into a convenient cutting bar shapes: U-shaped, new cutting elements tightened wire passageway in the base. attached to the bar

  13. Invention Compared with Prior Art Rotating handle at end of bar Cutting element attached to bar Base, with passageway U-shaped bar Smith Article X X X Jones Patent X X INVENTIONNOT ANTICIPATED NOVELTY REQT MET: PATENT GRANTED

  14. § 102. Novelty and loss of right to patent A person shall be entitled to a patent unless (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 applicant for patent, or (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, or . . . .

  15. Important Concept: the “Critical Date” The Invention Date

  16. Critical Concept: the “Critical Date” The Invention Date The Prior Art

  17. Earlier Invention, Earlier “Critical Date,” LESS PRIOR ART The Invention Date The Prior Art

  18. The “Stages of Invention” Reduction to practice: 6/1/1980 Filed: 9/1/1980 Conception: 1/1/1980 Unpacking the “invention date”

  19. In re Robertson • Page 365 • Held: Claim 76 not anticipated

  20. United States Patent 5,279,604 Robertson ,   et al.January 18, 1994 Mechanical fastening systems with disposal means for disposable absorbent articles • Abstract • A disposable absorbent article with a mechanical fastening system having an additional fastening element so as to provide convenient disposal of the absorbent article. The mechanical fastening system preferably comprises a tape tab having a first fastening element, a landing member comprising a second fastening element engageable with the first fastening element, and an additional fastening element for allowing the absorbent article to be secured in a configuration that provides convenient disposalof the absorbent article. The additional fastening element preferably comprises a second fastening element affixed to the backing surface of at least one of the tape tabs • Inventors: Robertson; Anthony J. (Blue Ash, OH); Scripps; Charles L. (Brookfield, WI) Assignee: The Procter & Gamble Company (Cincinnati, OH) Appl. No.: 918156 Filed: July 20, 1992

  21. Claim 76 [A] mechanical fastening system for forming side closures . . . comprising [1] a closure member . . . comprising [a] a first mechanical fastening means for forming a closure, said first mechanical fastening means comprising [i] a

  22. first fastening element; [2] a landing member . . . comprising [a] a second mechanical fastening means for forming a closure with said first mechanical fastening means, [b] said second mechanical fastening means comprising a second fastening element mechanically engageable with said first element; and

  23. [3] disposal means for allowing the absorbent article to be secured in a disposal configuration after use, said disposal means comprising [a] a third mechanical fastening means for securing the absorbent article in the disposal configuration, said third mechanical fastening means comprising [i] a third fastening element mechanically engageable with said first fastening element . . . .

  24. [1] a closure member [2] landing member [3] disposal means

  25. Prior Art United States Patent 4,895,569 Wilson,   et al. January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam

  26. United States Patent 4,895,569 Wilson: January 23, 1990 Filed: July 20, 1992 The Presumptive Invention Date: Robertson application filed

  27. Wilson Patent Issued before the “Critical Date” The Robertson Invention Date The Prior Art

  28. Wilson Patent is IN THE PRIOR ART The Robertson Invention Date The Prior Art

  29. United States Patent 4,895,569 Wilson ,   et al.* January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam • Abstract • A disposable absorbent garment (10) of the type having opposed engageable waistband portions (14) separated by an intermediate portion (16), comprises a breathable elastomeric nonwoven fabric outer cover (12) and a superposable absorbent structure (32), • Inventors: Wilson; John C. (Neenah, WI); Rajala; Gregory J. (Neenah, WI); Boland; Leona G. (Neenah, WI); Zehner; Georgia L. (Larsen, WI) Assignee: Kimberly-Clark Corporation (Neenah, WI) [*] Notice: The portion of the term of this patent subsequent to October 20, 2004 has been disclaimed.Appl. No.: 089647 • Filed: August 25, 1987

  30. Robertson ‘604 Patent Securing Tab

  31. Alternative Embodiment: No separate securing tab

  32. [1] a closure member [2] landing member [3] disposal means ??

  33. Wilson specification “Disposal of the soiled garment . . . Is easily accomplished by folding the front panel . . . Inwardly and then fastening the rear pair of mating fastening members to one another, thus neatly bundling the garment . . .”

  34. Robertson case, P. 364 Anticipation … requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2D (BNA) 1051, 1053 (Fed. Cir. 1987)

  35. Inherency – p. 364 “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

  36. Wilson reference • Closure member • Landing member • Disposal means with . . . • 3rd fastening element? • Wilson specification: “fasten rear pair of mating fastening members to one another . . .” p 368

  37. Fed Cir: Robertson case “The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. It cited no extrinsic evidence so indicating.”

  38. “[T]he Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person. .. [T]he Board’s analysis rests upon the very kind of probability or possibility — the odd use of fasteners with other than their mates — that this court has pointed out is insufficient to establish inherency.”

  39. Bd of Appeals opinion “[A]n artisan would readily understand the disposable absorbent garment of Wilson . . . as being inherently capable of [making the third fastening element] mechanically engageable with [the first fastening element]” — i.e., using the secondary closure not with its mate, but with one of the primary snap fasteners.”

  40. Robertson holding • Held: The third element in the Robertson claim, the separate “disposal means” was NOT present in the Wilson prior art reference • So Wilson is NOT ANTICIPATED – i.e., it is NOVEL

  41. The AIA is now the Law! This ought to give Merges something to work on for awhile!

  42. 1952 Act “Stages of Invention” Reduction to practice: 6/1/1980 Filed: 9/1/1980 Conception: 1/1/1980 Prior Art Reference, e.g., Jones Article

  43. AIA“First Inventor to File” Reduction to practice: 6/1/1980 X X Filed: 9/1/1980 Conception: 1/1/1980 Prior Art Reference, e.g., Jones Article

  44. Why Not Just “First to File”? • Because a First Inventor ALSO has a “grace period” under the AIA • So a “First Inventor” – meaning: someone who can SHOW that they invented earlier – MAY be able to preserve priority

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