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

Never so obscure . . .102/103 Prior Art and Analogous Arts Patent Law – Professor Merges 3.17.08

Sources of 102/103 Art • 35 USC 103: “differences between subject matter sought to be patented and the prior art” • Graham: “scope and content of the prior art” • What is “the prior art” or purposes of 103?

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

§ 103. Conditions for patentability; non-obvious subject matter (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

Baxter 5.14.76: Cullis Filing Date Cullis Invention Date 5.14.75: Cullis Critical Date Suaudeau and Ito public use activity

WL Gore v. Garlock Gore Filing Date Gore Invention Date Gore Critical Date Cropper on sale/in public use activity

In re Foster (1965), p. 785: 102(b) IS a proper source of 103 prior art In re Bass, 474 F.2d 1276, 177 U.S.P.Q. (BNA) 178 (C.C.P.A. 1973) • 102(g) IS a proper source of 103 prior art

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

In re Foster (cont’d) On logic and principle we think this contention is unsound, and we also believe it is contrary to the patent law as it has actually existed since at least 1898.

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

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

Prior art Regis filed Dec. 23. 1957 • Carlson Patent, 2,491,644: Issued 1949

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

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

Oddzon Prods v. Just Toys, Inc. • Design patent • Same standards for 102 and 103, in general

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

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

Obscure prior art and internal research teams • Expansion of 102/103 prior art • Technical definition of “inventive entities” • Problem!

The 1984 Amendment to 103 • Added what is now 103(c) “Subject matter developed by another [inventive entity], which qualifies as prior art only under 102(e), (f) or (g), shall NOT preclude patentability where subject matter and claimed invention were owned by same person or subject to obligation of assignment to same person at time invention was made”

“[O]wned by same person or under obligation to assign”: the importance of Contracts! • Same prior art that would invalidate patent when created by independent parties will be REMOVED from prior art by contractual agreement by all parties

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

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

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

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

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

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

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

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

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

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

Analogous arts: tests • From same field? • Pertinent to problem solved?

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

Sydansk: Same Problem? • Differences in conditions governing problem to be solved • Underground conditions different from storage tanks • PHOSITA faced with Clay’s problem would not look in oil extraction art – AGREE?

Counterpoint: In re Paulsen • Hinge in laptop computer claim • Other mechanical arts relevant; “problem not unique to portable computers . . .” • Importance of problem focus

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

State Contracting & Engineering Corp. v. Condotte America, Inc.346 F.3d 1057C.A.Fed. (Fla.),2003 • Technology: Highway construction, integrated column and pile • Reference: Xanthakos, “Slurry Walls”

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

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