AIPLA American Intellectual Property Law Association

RESPONDING TO USPTO REJECTIONS

PRACTICAL PATENT PROSECUTION TRAINING FOR NEW LAWYERS AIPLA BOOT CAMP 2010 DENISE M. KETTELBERGER, PH.D., J.D. FAEGRE & BENSON LLP

Statutory Requirements for Patentability ———— 

§101 Eligible Subject Matter

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§101 Utility

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§112,¶1 Enablement

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§112,¶1 Written Description

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§112,¶1 Best Mode

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§112,¶2 Distinct language

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§112,¶2 Claim form

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§102 Novelty

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§103 Obviousness

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General Approach ————————————————  Does the rejection make sense?  Check the requirements!  Has a prima facie case been established?  Check MPEP and Guidelines  Any exceptions? Special rules?  Does Board of Appeals or Federal Circuit law provide guidance? AIPLA American Intellectual Property Law Association

General Approach: Next...Check the Logic ———  Trace the rejection  Look for flaws     

Break in logic flow Inaccurate assumptions Inconsistent facts Contrary art Misconstrued terms

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General Approach: Look for a Simple Solution—  Explain concepts not understood  Point to explanations in specification  Consistent language in claims and specification  Added limitation or language to clarify meaning  What’s already of record?  Phone conference with Examiner

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General Approach: Draft a Careful Response——  Every word counts!  Claim construction  Equivalents  Admissions

 Be fully responsive

 Examiner’s organization  Match rejection/response  Don’t admit prima facie case

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 Use language in record     

Specification’s terms Limitations Admissions of record Claim specific Not “the invention”

General Approach: Draft an Organized Reply——  State the rejection

 In Examiner’s words but don’t admit true!  Trace the Examiner’s logic

 State the requirements

 What Examiner must show  Elements of prima facie case  Exceptions, Guidelines

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 Compare rejection to requirements  Point out deficiencies in logic  Refute prima facie case  Distinguish rejection from claims  Provide evidence to refute rejections

Examiners are our Friends————————————  Respectful arguments      

Present the facts Argue the relationships Consider alternatives Make suggestions Listen to suggestions Be reasonable

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101 Eligible Subject Matter: The Law——————  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 therefore.... 35 U.S.C.§101

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101 Eligible Subject Matter: The Law——————  MPEP §2105 –2106  Patentable Subject Matter

 Interim 2010 Post-Bilski Guidelines  Watch for new Federal Circuit cases

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101 Post-Bilski Guidelines————————————  Method claims are patent-eligible  unless disqualified as one of the exceptions  law of nature; physical phenomena, abstract idea

 Examiner should determine if the claim  viewed as a whole  is disqualified as a claim to an abstract idea

 Factors favoring patent-eligibility  Satisfy machine-or-transformation test  Evidence the abstract idea is practically applied AIPLA American Intellectual Property Law Association

101 Bilski Factor A: Particular Machine————— A. Method involves or is executed by a particular machine/apparatus 1) particularity or generality of the machine or apparatus 2) if the machine/apparatus implements the method steps 3) if the involvement is extra-solution activity or field of use (to the extent machine/apparatus imposes meaningful limits on steps)

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101 Bilski Factor B: Transformation——————— B. If performance of the method involves or results in transformation of a particular article 1) Particularity or generality of the transformation 2) The degree to which the article is particular (can be specifically identified)

3) Nature of the transformation (type/extent changed)

4) What type of article is transformed (object or substance v. contractual obligation or mental judgment)

5) If the involvement is extra-solution or field of use (extent transformation puts meaningful limits on steps) AIPLA American Intellectual Property Law Association

101 Bilski Factor C: Applied Law of Nature——— C. If performance involves an application of a law of nature, even in the absence of a machine or transformation 1) particularity v. broad, generic application (use of electromagnetism for transmitting signals at a distance)

2) application solely involving subjective determinations (e.g., ways to think about the law of nature)

3) if its involvement is extra-solution activity or field of use (does the application impose meaningful limits on execution of the method) AIPLA American Intellectual Property Law Association

101 Bilski Factor D: Transformation—————— D. A general concept (principle, theory, plan, or scheme) involved in executing the steps (can be a clue that the claim is drawn to an abstract idea)

1) Extent claim use would preempt use of concept in other fields (effectively grant a monopoly on the concept)

2) Extent claim is so abstract to cover known and unknown uses on any existing or future machinery even without any apparatus 3) Effectively cover all possible solutions to a particular problem 4) Concept disembodied versus implemented in some tangible way (meaningful way)

5) Mechanism steps are implemented (observable/verifiable v subjective/imperceptible)

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Bilski Guidelines: General Concepts, Examples—— 

Basic economic principles — Hedging, insurance, financial

transactions, marketing

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Basic legal theories — Contracts, dispute resolution, rules of law

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Mathematical concepts — Algorithms, spatial relationships, geometry

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Mental activity — Forming a judgment, observation, evaluation, opinion

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Interpersonal interactions or relationships — Dating, conversing

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Teaching concepts — Memorization, repetition

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Human Behavior — Exercising, wearing clothing, following instructions

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Instructing “how business should be conducted”

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101 Eligible Subject Matter: Examiner’s Analysis— 1. Determine if what is claimed is within the four statutory classes — process, machine, manufacture, or composition of matter. 2. If a process claim, determine if disqualified as an exception: law of nature, physical phenomena, or abstract idea 3. Apply the Bilski factors to the claim as a whole to determine merely an abstract idea. AIPLA American Intellectual Property Law Association

101 Eligible Subject Matter: Before you reply—  Does the rejection make sense?  What’s being claimed?  Trace the logic… Facts, assumptions  Look for yourself , any flaws? Breaks?

 Machine, Manufacture, Composition, Process?  Machine or Transformation?  Law of nature or abstract idea?  Practical application?

 Weigh the factors AIPLA American Intellectual Property Law Association

101 Patent-Eligible Subject Matter — Response  Restate the Rejection  Correct any misunderstandings; show basis  Note if Guidelines not followed

 Show Machine or Transformation in claims  Law of Nature or Abstract Idea?  Show application in claim and specification

 Discuss weight of the factors in favor of specific and transparent invention AIPLA American Intellectual Property Law Association

101 Utility: The Law———————————————  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 therefore.... 35 U.S.C.§101

 Utility  Is the claimed invention useful?  Explicitly recited or inferred  Better to recite in the specification! AIPLA American Intellectual Property Law Association

101 Utility: Examiner’s Rejection————————  Determine what’s disclosed — in specification and art  Look for any asserted utility  Presume utility — unless reason to doubt  Reasoned statement of rejection  Why not specific, substantial, credible  Facts and assumptions relied upon

 Examiner can request further information  Particularly where evidence is conflicting AIPLA American Intellectual Property Law Association

101 Utility: Before you reply... —————————  Does the rejection make sense?  Where’s the problem? What’s in doubt?  Trace the logic...  Facts, assumptions, Look for yourself  Any flaws? Breaks?

 Specific, Substantial, Credible utility?

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101 Utility ————————————————————  A patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion. Specific, Substantial, Credible Utility

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101 Utility ————————————————————  Anything that fits into this shaped box.  A product that binds X protein.  A chemical that degrades ink.

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Utility: Technology matures ——————————  Treating baldness was once considered an inherently unbelievable undertaking...  Treating cancer was an incredible utility...  Treating AIDS...  Gene therapy...

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112 Written Description, Enablement, Best Mode————————————————————

 The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention 35 U.S.C. §112 ¶1

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112 Written Description: Law —————————  The specification shall contain a written description of the invention... 35 U.S.C. §112, ¶1

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Written Description: Law ————————————  Separate and distinct from Enablement requirement  New matter and original claims  Possession test  Is it clear from the written description that the inventor was in possession of the claimed invention at the time of filing?

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112 Written Description: Law —————————  MPEP §2163 Guidelines  http://www.uspto.gov/web/menu/written.pdf

 Evidence  Words, drawings, figures, formulae, examples...  Research steps  Doubts or flaws weigh against WD

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112 Written Description Factors ———————— 1. Skill and knowledge in the art 2. Disclosed at least partial structure 3. Disclosed physical/chemical properties 4. Disclosed correlation structure/function 5. Disclosed method of making 6. Representative species for genus

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112 Written Description: Examiner’s Rejection—  The scope of disclosure is not commensurate with the scope of the claims  Specification teaches only X, broadly claims XYZ  Specification contains no description of XYZ

 Reference ABC shows contrary evidence  Discloses Y does not function like X

 One skilled in the art would not consider inventor possessed the claimed invention  Claims limited to X may overcome the rejection AIPLA American Intellectual Property Law Association

112 Written Description: Before you Reply... —  Match disclosure and scope of claims...

 Where is the evidence for expansion from X to XYZ?

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Not required:

 Ipsis verbis  Actual reduction to practice  Well known information

 What is disclosed in reference ABC?

 Is the disclosure relevant to the claims?  Are the rejection’s specific findings of fact correct?  Disputed in the specification or other papers?

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Written Description Issue: USSN 10/000,001——  The amended claims recite forming a silicon layer by reacting silane and an inert gas in a CVD procedure.  The specification states “that the leakage of current of the silicon layer may be reduced by adding an inert gas, argon,”. Paragraph 15  Is claiming the use of any “inert gas” adequately supported in the original specification or does this amendment create a potential written description issue? AIPLA American Intellectual Property Law Association

Written Description Analysis: 10/000,001——— 

Evidence of possession?

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The amended claims recite forming a silicon layer by reacting silane and an inert gas in a CVD procedure. Dependent claims recite the inert gas is argon.

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The specification does not provide any teaching that a silicon layer can be deposited in the presence of any other inert gas. 

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Is this chemistry predictable? 

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No working examples; no specific description of effects. Effect of argon on silicon layer formation previously unknown

Would one skilled in the art on reading the specification have a basis to believe the inventor was in possession of the claimed invention?

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Written Description: Before you reply... ————  What is the basis of the WD rejection?  What does the rejection assert as missing? Where is it found?

 Follow the logic... Any flaws or breaks?  How to expand argon to inert gas? Structure/function?  How is the invention described?

 Any specific reduction to practice?  Other specific evidence of possession?  Knowledge or skill in the art re: silicon deposition by CVD?

 Enabled but not described? AIPLA American Intellectual Property Law Association

112 Written Description—————————————  To fulfill the written description requirement, a patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention.

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112 Enablement: Law——————————————  The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same… 35 U.S.C. §112, ¶1

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112 Enablement: Law——————————————  MPEP §2164 Test for Enablement  Whether the disclosure, when filed, was sufficient to enable one of skill in the art to make and use the claimed invention without undue or unreasonable experimentation  Some experimentation is ok, not “undue”

 Preferably omit what is well known in the art  The test for enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue. AIPLA American Intellectual Property Law Association

Undue Experimentation: Wands’ Factors———— 1. Claim breadth 2. Nature of invention 3. State of prior art 4. Level of ordinary skill 5. Predictability in the art 6. Direction provided by inventor 7. Working examples and correlation to claim 8. Quantity of experimentation needed to make and use based on disclosure AIPLA American Intellectual Property Law Association

Enablement: Scope of the Claims————————  Is everything within claim’s scope enabled?  Broadest interpretation with disclosure  “Reasonable correlation”

 Specific example or broad terminology  Inoperable embodiments are ok  If routine to determine  Critical features must be claimed  More than preferred

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Enablement: Rejection USSN 10/000,001———  Claims 1–4 have been rejected under 35 U.S.C. §112, first paragraph, as containing subject matter which was not described in the specification in such a way as to enable one of ordinary skill in the art to make and/or use the invention.  Unclear how silicon layer is formed.  Unclear what is being controlled.

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Enablement: Reply ———————————————  Trace the logic of the rejection  Consider the cited publications; are there others?  Consider Wands factors re “undue” experimentation  Scope of the claims; depth of the disclosure; predictability

 Structure/function relationships  Known or disclosed

 Confirm with additional evidence/data  Declaration of the inventor  Independent “make and use” with only specification AIPLA American Intellectual Property Law Association

Enablement Response: ———————— Relating to How Silicon Layer is Formed 

The Examiner has rejected claims 1-4 under 35 U.S.C. § 112, first paragraph, asserting that these claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to make and/or use the inventions, in that claim 1 does not describe how the silicon layer is formed.

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Applicant respectfully traverses this rejection and requests reconsideration and withdrawal of this rejection.

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As is provided in paragraphs 3-6 the deposition of silicon on a substrate using CVD is a well known process. The Examiner has failed to establish a reasonable basis to doubt the objective statements in the specification.

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Therefore, Applicant respectfully submits that the prima facie case has not been established for the rejection of claims 1-4 under 35 U.S.C. §112, first paragraph and request the withdrawal of this rejection.

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Enablement: Response What is being controlled— 

The Examiner has rejected claim 2 under 35 U.S.C. §112, first paragraphs, asserting that these claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to make and/or use the inventions with regard to what is being controlled in claim 2.

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Claim 2 sets forth that “an input for argon gas and an input for the SiH4 gas” are being controlled. The specification in paragraphs 11, 15-17 and Figures 1 and 2 discloses that the input of the gases are being controlled. The Examiner has failed to establish a reasonable basis to doubt the objective statements in the specification.

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Applicant respectfully submits that the prima facie case has not been established for the rejection of claims 1-4 under 35 U.S.C. § 112, first paragraph and request the withdrawal of this rejection.

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Enablement———————————————————  The enablement requirement is met if the description enables any mode of making and using the claimed invention.  To be enabling, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation.

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Best Mode ————————————————————  The specification...shall set forth the best mode contemplated by the inventor of carrying out his 35 U.S.C.§112,¶1 invention.  One or more features can each have a best mode  Best at the time of filing; Not required to update  Don’t need to point out; can’t conceal  Litigation issue; Unique to U.S. Law

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Distinct Language: Law—————————————  The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.35 USC §112, ¶2  MPEP §2171  Two requirements:  Subject matter  Clarity

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Distinct Language: Possible Basis for Rejection—  

The claims are not precise, clear, correct, and unambiguous. Claims are inconsistent with Applicant’s statements  

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Claim language is unclear such that one skilled in the art cannot identify its boundaries.    

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In specification, in corresponding cases In later published papers, in court briefs...

Functional language only Problematic terms: about, substantially, essentially, effective amount, similar, relatively, suitable, homologous, etc For example, such as, Antecedent basis: the, said

Alternative claim language that would be acceptable...

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Distinct Language: Rejection——————————  Claims 1-4 are rejected under 35 USC §112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as his invention.  No antecedent basis for “the chemical vapor deposition (CVD) chamber”.  Step of “providing gases comprising SiH4 and argon” is indefinite. AIPLA American Intellectual Property Law Association

Distinct Language: Reply———————————— 

Claims are presumed to contain what Applicant regards as the invention, absent specific contrary evidence.  

Permitted to claim alternative inventions in other cases Be careful in asserting “the invention” – admissions    

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The invention described in claim X. The claimed invention (this application). The invention (all cases?) Choice of words matters here!

Claims are reasonably clear and precise  

To one skilled in the art. Functional language, negative limitations, alternative expressions are acceptable, as long as, boundaries are clear.

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Distinct Language: Reply to providing gases—— 

With regard to the rejection of claim 1, directed to the step of “providing gases comprising SiH4 and argon”, the first sentence of the second paragraph of Section 112 is essentially a requirement for precision and definiteness of claim language. If the scope of subject matter embraced by a claim is clear and if the applicant has not otherwise indicated that he intends the claim to be of a different scope, then the claim particularly points out and distinctly claims the subject matter which the applicant regards as his invention. In re Borkowski et al., (CCPA 1970) 422 F2d 904, 164 USPQ 642.

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Applicant respectfully submits that the scope of the claim is clear and request withdrawal of this rejection.

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Definite Claims——————————————————  The purpose of the claims is not to explain the technology, but to state the legal boundaries of the patent grant.  A claim is not indefinite simply because it is hard to understand when viewed without benefit of the specification.

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Definite Claims——————————————————  The specification and claims of a patent constitute one of the most difficult legal instruments to draw with accuracy.  It is the Applicant’s burden to precisely define the invention, not the PTO’s.

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Affidavits or Declarations————————————  Two types:  37 C.F.R. 1.132 — Traversing Rejections  37 C.F.R. 1.131 — Swearing Back of Reference

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Affidavit/Declaration: Traversing a Rejection—  37 C.F.R. 1.132  MPEP §716  Evidence submitted to traverse a rejection that does not fall under some other rule.  To overcome prior art rejection 

Comparison studies; Unexpected results, etc.

 To overcome non-art rejection  

Evidence to supplement the disclosure must be known in the art. Declaration can explain factual basis why feature is disclosed.

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Affidavit/Declaration: Traversing a Rejection—  Timely filed  Before final rejection and appeal  After final if responding to new rejection

 Objective evidence supported by proof  Real evidence, not attorney argument  Must be considered by Examiner

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Declaration————————————————————  Evidence of Enablement  Materials available  Contemporaneous publications, can make, obtain

 One skilled in the art can make and use    

Provide only specification; show can make and use Further showing that the invention works as described Actual practice of prophetic examples Some deviation from disclosure permitted

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Drafting Tips———————————————————  Choose simple, clear terms  Specifically define key terms  Review for clarity and streamline wording  Be consistent in word use  Build positive limitations into the specification  Provide alternative limitations in specification  Avoid multiple definitions AIPLA American Intellectual Property Law Association

Drafting Tips 2——————————————————  Clearly trace logic from working examples to expanded claim scope  Use prior art and knowledge in art  Demonstrate similar correlations

 Provide multiple tiers of evidence  Provide details of experimentation  Starting materials, steps, results  Outline prophetic examples

 Confirm all claim terms in description AIPLA American Intellectual Property Law Association

Prosecution Tips—————————————————  Know prosecution history and claims of companion cases.  Know prior and later art  Common themes and distinctions  Own art and that of others

 Be consistent  Use language provided in specification  Avoid unnecessary admissions AIPLA American Intellectual Property Law Association

Prior Art Rejections———————————————  The most common Examiner’s rejection is in view of prior art.  The claimed invention  Lacks novelty under 35 U.S.C. § 102 or  Is obvious under 35 U.S.C. § 103

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35 U.S.C. § 102 Novelty————————————— 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 (c) he has abandoned the invention, or (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or (e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or (f) he did not himself invent the subject matter sought to be patented, or (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

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35 U.S.C. § 102 (a), (e)—————————————— A person shall be entitled to a patent unless – [ another entitled– first gets ] (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 (e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

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35 U.S.C. § 102 (f), (g)—————————————— A person shall be entitled to a patent unless – [another entitled – first gets ] (f) he did not himself invent the subject matter sought to be patented, or (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

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35 U.S.C. § 102 (b), (d)—————————————— A person shall be entitled to a patent unless – [ it’s been done! ] (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 (d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or AIPLA American Intellectual Property Law Association

35 U.S.C. § 102 (c)———————————————— A person shall be entitled to a patent unless – (c) he has abandoned the invention, or

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Prior Art — Not Novel because… ———————— 

§ 102(a) public knowledge or use in US  

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§ 102(e) prior filing in US  

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U.S. Applications that Publish or Issue as Patents Filed prior to invention date

§ 102(b) prior publication   



Global Patents and Publications Public disclosure prior to invention date

Global Patents and Publications U.S. Public Use and Sale Granted or public more than one year before US filing date

§ 102(d) prior patent granted before filing  

Foreign Patent granted to Applicant Granted more than one year before US filing date

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Novelty – It’s not NEW —————————————  The invention is in the public domain  You can’t patent what’s already known  Evidence based on public awareness  Publications, patents or literature  Offer for sale, sale of product  Described by others, Patentee’s Admissions

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First to Invent — Entitled ————————————  First to invent gets a US Patent  Prior art based on date of invention  Who invented first?

 Prior art sets a statutory bar  Grace period of one year  Can show invented before publication  Must file within one year of public disclosure

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35 U.S.C. § 102 – Easy Outs——————————— A person shall be entitled to a patent unless – (c) he has abandoned the invention (f) he did not himself invent the subject matter sought to be patented

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35 U.S.C. § 102 — TIME BARS —————————— 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, or (d)

AIPLA American Intellectual Property Law Association

35 U.S.C. § 102 — TIME BARS —————————— A person shall be entitled to a patent unless – (b) (d) the invention was first patentedor caused to be patented, or was the subject of an inventor's certificate,by the applicantor his legal representatives or assignsin a foreign country prior to the date of the application for patent in this countryon an application for patent or inventor's certificatefiled more than twelve months before the filing of the application in the United States AIPLA American Intellectual Property Law Association

35 U.S.C. § 102 — First to Invent ———————— A person shall be entitled to a patent unless – (a) the invention wasknown 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, (e)

AIPLA American Intellectual Property Law Association

35 U.S.C. § 102 — First to Invent ———————— A person shall be entitled to a patent unless – (e) the invention was described in – (1) an application for patent, publishedunder section 122(b),by anotherfiled in the United States before the invention by the applicantfor patent or (2) a patent granted on an application for patent by anotherfiled in the United States before the inventionby the applicant for patent, except that an international applicationfiled under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an applicationfiled in the US only if the international applicationdesignated the US and was published under Article 21(2) of such treaty in the Englishlanguage; AIPLA American Intellectual Property Law Association

35 U.S.C. § 102 — First to Invent ———————— A person shall be entitled to a patent unless – (g)(1) during the course of an interferenceconducted under section 135 or section 291,another inventor involved therein establishes, to the extent permitted in section 104, thatbefore such person's invention thereof the invention was made by such other inventorand not abandoned, suppressed, or concealed, or (2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respectivedates of conceptionand reduction to practiceof the invention, but also the reasonablediligenceof one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

AIPLA American Intellectual Property Law Association

§ 102 Anticipation — Prima Facie Case—————  A proper § 102 rejection is made where a single reference discloses every element of the claim.  Explicitly or inherently  Must be enabling  Where element missing, not anticipated

AIPLA American Intellectual Property Law Association

102 Anticipation—————————————————  Normally requires showing all elements in a single prior art reference  Exceptions where additional art is used  to prove primary reference is enabling  to explain meaning of terms in primary reference  to show non-disclosed characteristic is inherent

AIPLA American Intellectual Property Law Association

Anticipation 102—————————————————  Inherency  Examiner must demonstrate the “inherent” characteristic necessarily flows from teachings of the applied prior art  The mere fact that a certain thing may result from a given set of circumstances is not sufficient  A novel method of using a known product is not anticipated

AIPLA American Intellectual Property Law Association

35 U.S.C. § 103 — Obviousness—————————  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 obviousat the time the invention was made to a person having ordinary skillin the art to which said subject matter pertains.

AIPLA American Intellectual Property Law Association

Obviousness — 103———————————————  Anybody could have done that!  Where’s the invention?  Somewhat subjective

 KSR  Single reference or combination of multiple  Evidence/reason to combine references  Predictable results

 Post KSR, harder to overcome  Good to show Unexpected Results AIPLA American Intellectual Property Law Association

Prior Art Rejections 102/103——————————  Claims 1–10 are rejected as anticipated under 35 U.S.C. § 102(b) by Jones 1963, and as obvious under 35 U.S.C. § 103 in view of Jones 1963 and Smith 2000.  Jones teaches a device having a base, cutting edge, and sensor as claimed.  Smith teaches electronic tools. It would have been obvious to POSA to modify the device of Jones to add electronic sensors because Smith teaches the desirability of electronic devices. AIPLA American Intellectual Property Law Association

Basic Analysis—————————————————— 1. Check the dates  Does the reference qualify as prior art?

2. Check rejection’s premise and logic  Is the examiner correct?

3. Read the entire reference  Any admissions or contradictions? Enabled?

4. Consider the claim language  Does the language cause ambiguity?  Can amendment avoid qualifying prior art? AIPLA American Intellectual Property Law Association

Reply — Disqualify the Art———————————— 

Not dated before invention date (filing date)

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Claim priority to an earlier filed application

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Swear behind reference in a Rule 131 declaration, providing antedating evidence of prior invention;

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Declare the reference as the inventor’s own work in a Rule 132 declaration, providing evidence in support;

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Declare the reference as derived from the inventor in a Rule 132 declaration, providing evidence in support.

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If author is co-inventor, then amend to include author as inventor.

AIPLA American Intellectual Property Law Association

CAUTION!————————————————————  Declarations can be dangerous  Can limit options for claim interpretation  Misstatements can render patent unenforceable  Say only what’s needed; true facts

 Review with signing party  Understands meaning and scope of statements  Believes statements to be true

AIPLA American Intellectual Property Law Association

Reply — Distinguish Cited Art from Claims——— 

Cited art doesn’t teach all elements of the claim 

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The art does not enable the claimed invention    

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Internal inconsistencies, admissions by authors No expectation of success; non-functional if changed in manner of the invention Specific teaching away – this won’t work, reasons

Reply with reasoning and evidence 

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Specific element missing

Unsupported argument won’t work

Unpredictable 

Specific difficulties and/or reasons why

AIPLA American Intellectual Property Law Association

Amend Claims to Overcome Rejection————— 

Amend to avoid specific art  

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No new matter  

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Language is supported by specification Ipsis verbis not required

Be consistent with related prosecution 

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Careful not to unduly limit claim scope Estoppel created for scope of deleted matter

Impact on claim construction during litigation

Reply  

Show that amended claims fall outside rejection Consider how § 103 may be applied to new claims

AIPLA American Intellectual Property Law Association

Reply to § 103 Obviousness Rejection——————  Multiple cited references  What’s missing from each?  Reason to combine? Reason not to?  Contrary Teaching?

 Determine differences – claims versus prior art  Different in structure  Different in function  Different problem addressed

AIPLA American Intellectual Property Law Association

§ 103 Obviousness — Prima Facie Case—————  Claim must be considered as a whole  References must be considered as a whole  Articulated reason for making the combination  Hindsight vision not permitted  A reasonable expectation of success is required  Secondary Considerations must be weighed

AIPLA American Intellectual Property Law Association

Graham Factors————————————————— 1. Scope and content of the prior art 2. Differences between the prior art and claims 3. Level of ordinary skill in the pertinent art 4. Objective indicia of non-obviousness ― Unexpected Results ― Copying by others ― Failure of others ― Licensing AIPLA American Intellectual Property Law Association

― Long-felt need ― Commercial Success ― Skepticism of experts ― Other evidence

KSR Quotes———————————————————— 

Such a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

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If a person of ordinary skill in the art can implement a predictable variation and would see the benefit of doing so, 103 likely bars its patentability.

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Where there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, POSA has good reason to pursue…..if this leads to anticipated success, it is likely the product not of innovation, but of ordinary skill and common sense.

AIPLA American Intellectual Property Law Association

KSR Quotes———————————————————— 

A person of ordinary skill is also a person of ordinary creativity, not an automaton.

AIPLA American Intellectual Property Law Association

USPTO Examiner Guidelines 2007———————— Rationales for Obviousness post-KSR A. Combiningprior art elements according to known methods to yield predictable results. B. Simplesubstitutionof one known element for another to obtain predictable results. C. Use of known techniqueto improve similar devices, methods, or products, in the same way. D. Applying a known technique to a known device, method or product, ready for improvement to yield predictable results. AIPLA American Intellectual Property Law Association

USPTO Examiner Guidelines 2007———————— Rationales for Obviousness post-KSR E. Obvious to try– choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. F. Known work in one field may prompt variations for use in the same or different field based on design incentives or other market forcesif the variation would have been predictable to one of ordinary skill in the art. G. Some teaching, suggestion, or motivationin the prior art that would have led one of ordinary skill to modify the prior art or combine prior art teachings to arrive at the claimed invention. AIPLA American Intellectual Property Law Association

Board of Appeals Analysis———————————— 1. Are each of the claimed elements found within the scope and content of the prior art? 2. Could POSA have combined the claimed elements using methods known at the time of invention was made? 3. Would POSA have recognized at the time the invention was made that the capabilities or functions of the combination were predictable? 4. Were the claimed combinations uniquely challenging or difficult for one of ordinary skill in the art? 5. Would the invention require more than ordinary creativity? AIPLA American Intellectual Property Law Association

Distinguish the Art———————————————— 

Does the combination teach all elements? 

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Is each reference enabling?  

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Look for internal inconsistencies, admissions Expectation of success? Teaching away?

POSA at the time of invention    

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Point out any and all differences

Unpredictable? Unexpected results? Particularly difficult? More than ordinary creativity?

Reply with reasoning and evidence

AIPLA American Intellectual Property Law Association

Post-KSR Obviousness——————————————  Law still evolving  More than ordinary creativity  Unexpected results  Unpredictable  Teaching away

AIPLA American Intellectual Property Law Association

In Practice———————————————————— 1. Carefully read the rejection 

Does it make sense with the claims?

2. Carefully read the cited art 

Limits? Admissions? Errors?

3. Consider the claim language 

Fix any word choice problems; amend

4. Consider patent family history 

Has the art been addressed before?

5. Talk to the Examiner 

Get on the same page

AIPLA American Intellectual Property Law Association

In Practice———————————————————— 6. Only submit what you understand 

Have client verify scientific arguments

7. Use Declarations with caution 

Factual statements, understood by signor

8. Argue the “claimed invention” 

Not the disclosure or “the invention”

9. Say just what you need, no more 

Estoppel

10. Be polite and courteous in your response

AIPLA American Intellectual Property Law Association

In Practice — Obviousness——————————— 11. Review USPTO Guidelines 

Understand rationale for rejection and refute

12. Review Board of Appeals/Federal Circuit opinions 

Align facts with favorable decisions

13. Factually assert secondary considerations 

Unpredictability, teaching away

14. Monitor case law as it evolves

AIPLA American Intellectual Property Law Association

AIPLA American Intellectual Property Law Association

THANK YOU!