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DOCTRINE OF INHERENCY

Disclosure of a prior art reference, whether express, implicit or inherent, may be relied upon to reject claims for lacking novelty under 35 USC section 102 or PCT Article 33(2) or for being obvious or lacking an inventive step 35 USC section 103 or PCT Article 33(3)

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[ii]The International Preliminary Examination, PCT 33 (2) For the purposes of the international preliminary examination, a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.

[iii]A PHOSITA is a fictional person considered to have the normal skills and knowledge in a particular technical field, without being a genius. A PHOSITA is a reference for determining or evaluating whether an invention is non-obvious/lacks an inventive step or not. If it would have been obvious for this fictional person to envision the invention while starting from the prior art, then the particular invention is considered not patentable. Justice Kennedy defined a PHOSITA is also a person of ordinary creativity, not an automaton, and acknowledged that his description of a PHOSITA does not necessarily conflict with other Federal Circuit cases that described a PHOSITA as having “common sense” and who could find motivation “implicitly in the prior art.” Kennedy emphasized that his opinion was directed at correcting the “errors of law made by the Court of Appeals in this case” and does not necessarily overturn all other Federal Circuit precedent. In 1941, the Supreme Court required a “flash of genius” for a patent to stand. Congress lowered that high standard in 1952 to non-obviousness to one with “ordinary skill in the art.” Now again, more than interpretation, the Supreme Court exceeded the law in its KSR v. Teleflex decision. In its own flash of unpatentable creative insight, SCOTUS redefines the statutory “person having ordinary skill in the art” into someone omnificent and possessing comprehensive technical expertise. 35 U.S.C. §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. The SCOTUS ruling in KSR, the Court of Appeals failed to recognize that the problem motivating the patentee may be only one of many addressed by the patent’s subject matter. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. 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. 35 USC § 103(a) specifies a “a person having ordinary skill in the art to which said subject matter pertains.” The subject matter is that of the claimed invention: “the subject matter sought to be patented.” Obviousness, by statute, relates to the “the subject matter as a whole.” In a broadening of legislative definitions by sly substitution, SCOTUS substitutes its own, significantly broader “field of endeavor” and “addressed by the patent” for the statutory “subject matter sought to be patented”: “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.”

The SCOTUS identified two possible blind spots in the peripheral vision of the PHOSITA with common sense: 1) prior art teaching away, which seldom happens, because most writers do so constructively, not by denigration of approaches that may later prove out; and 2) a hazy “more than predictable utility” a beckoning to declare an inventive step, like the European patent regime requirement, but fraught with ambiguity and no guidance, leaving “predictable” as a crap shoot. When the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.

35 USC § 103: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

[iv] RCA Corp. Applied Digital Data Systems, Inc., 730 F.2d 1440 (Fed. Cir. 1984)

[v] Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001)

[vi] Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)

[vii] Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004)

[viii] Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1348-49, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999)

[ix] Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed.Cir.1999)

[x] SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343-44, 74 USPQ2d 1398, 1406-07 (Fed. Cir. 2005)

[xi] In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993)

[xii] In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)

[xiii] Metabolite Labs., Inc. v. Lab.Corp. of Am. Holdings, 370 F.3d 1354, 1367, 71 USPQ2d 1081, 1091 (Fed. Cir. 2004)

[xiv] Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990). Applicant’s invention was directed to a biaxially oriented, flexible dilation catheter balloon (a tube which expands upon inflation) used, for example, in clearing the blood vessels of heart patients). The examiner applied a US patent to Schjeldahl which disclosed injection molding a tubular preform and then injecting air into the preform to expand it against a mold (blow molding). The reference did not directly state that the end product balloon was biaxially oriented. It did disclose that the balloon was formed from a thin flexible inelastic, high tensile strength, biaxially oriented synthetic plastic material .The examiner argued that Schjeldahl’s balloon was inherently biaxially oriented. The Board reversed on the basis that the examiner did not provide objective evidence or cogent technical reasoning to support the conclusion of inherency.

[xv] In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997). A prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. The examiner had asserted inherency based on the structural similarity between the patented spout and applicant’s disclosed top, i.e., both structures had the same general shape. The court stated that nothing in Schreiber’s applicant’s claim suggests that Schreiber’s container is of a ‘different shape’ than Harz’s patent. In fact, embodiments according to Fig. 5 of Harz and Fig. 1 of Schreiber’s application have the same general shape. For that reason, the examiner was justified in concluding that the opening of a conically shaped top as disclosed by Harz is inherently of a size sufficient to ‘allow several kernels of popped popcorn to pass through at the same time’ and that the taper of Harz’s conically shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted to the container.’ The examiner therefore correctly found that Harz established a prima facie case of anticipation.

[xvi] MPEP § 2112(IV)

[xvii] MPEP § 2112(IV)

[xviii] id

[xix] In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999)

[xx] Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990)

[xxi] In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)

[xxii] n re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977)

[xxiii] In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).

[xxiv] In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957)

[xxv] In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978); See also In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966)

[xxvi] In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986); See also In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)

[xxvii] id

[xxviii] In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)

[xxix] In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420-21 (CCPA 1970); In re Knapp Monarch Co., 296 F.2d 230, 132 USPQ 6 (CCPA 1961); See also In re Fox, 471 F.2d 1405, 1407, 176 USPQ 340, 341 (CCPA 1973); In re Zurko, 258 F.3d 1379, 1385, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001); In re Grose, 592 F.2d 1161, 1167-68, 201 USPQ 57, 63 (CCPA 1979); In re Eynde, 480 F.2d 1364, 1370, 178 USPQ 470, 474 (CCPA 1973); In re Soli, 317 F.2d 941, 945-46, 137 USPQ 797, 800 (CCPA 1963); In re Chevenard, 139 F.2d 711, 713, 60 USPQ 239, 241 (CCPA 1943);

[xxx] Kaiser, The Federal Circuit’s Unbounded Conception Of Inherency In Patent Law, 47 Loyola LA Law Review, 345 (2013). Available at: http://digitalcommons.lmu.edu/llr/vol47/iss1/7

[xxxi] In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).

[xxxii] Viagra (sildenafil) relaxes muscles and increases blood flow to particular areas of the body. Sildenafil is a selective cGMP PDE inhibitor, first patented for use in the treatment of cardiovascular disorders such as angina, hypertension, heart failure and atherosclerosis (US 5,250,534 A); but failed in initial studies for use in hypertension (high blood pressure), angina pectoris and ischemic heart disease. However, a new treatment of impotence using sildenafil was obtained later (US6469012 B1).

[xxxiii]WO 2015/035361 A2; Claim 1. A process of forming a mar resistant organic material comprising: providing a substrate comprising a thermoplastic material, said substrate having a surface; infusing an adhesion promoter into said surface such that a first portion of said adhesion promoter penetrates said surface to form an infused substrate material, and a second portion of said adhesion promoter extends from said surface or is present at said surface, said first portion and said second portion covalently linked; and optionally depositing a mar resistant coating or hardcoat on said surface, said mar resistant coating or hardcoat adhering to said infused substrate material absent an intermediate layer.

WO 2015/035361 A3:




[xxxiv] Affidavits or Declarations Traversing Rejections, 37 CFR 1.132 ; Objective Evidence of Nonobviousness; Available at: http://www.uspto.gov/web/offices/pac/mpep/s716.html

[xxxv] 35 USC § 103: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

[xxxvi]The International Preliminary Examination, Article 33 (3) For the purposes of the international preliminary examination, a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.

[xxxvii] In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995); See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983).

[xxxviii] Par Pharmaceutical v. TWI Pharmaceuticals, Inc.

[xxxix] 35 USC § 103: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

[xl] Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17-18 (1966)

[xli] Union Carbide Corp. v. Am. Can Co., 724 F.2d 1567 (Fed. Cir. 1984)

[xlii]KSR Intl. v. Teleflex, Inc.

[xliii] In re Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir. 2002)

[xliv] Id. at 415, 82 USPQ2d at 1395

[xlv] Id. at 415-16, 82 USPQ2d at 1395

[xlvi] Id. at 416, 82 USPQ2d at 1395

[xlvii] Id

[xlviii] Id. at 416-17, 82 USPQ2d at 1395

[xlix] Sakraida v. AG Pro, Inc. at 417, 82 USPQ2d at 1395-96

[l]The KSR Decision and Principles of the Law of Obviousness: http://www.uspto.gov/web/offices/pac/mpep/s2141.html

[li] Id. at 417, 82 USPQ2d at 1396

[lii] Id

[liii] Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)

[liv] Id. at 17-18, 148 USPQ at 467

[lv] KSR, 550 U.S. at 406-07, 82 USPQ2d at 1391 (2007)

[lvi] See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied, 426 U.S. 955 (1976); Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976); and Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 163 USPQ 673 (1969).

[lvii] KSR, 550 U.S. at 407, 82 USPQ2d at 1391.

In Perfect Web Technologies, Inc. v. Info USA, Inc., 587 F.3d 1324, 1329, 92 USPQ2d 1849, 1854 (Fed. Cir. 2009)

[lviii] In Perfect Web Technologies, Inc. v. Info USA, Inc., 587 F.3d 1324, 1329, 92 USPQ2d 1849, 1854 (Fed. Cir. 2009)

[lix] In re Bruce Beasley (Fed. Cir. December 7, 2004)

[lx] In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782 (Fed. Cir. 1995)

[lxi] Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565 (Fed. Cir 1986)

[lxii] Application Spoorman, 363 F.2d 444, 448 (CCPA 1966)

[lxiii] The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)

The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must “conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” 37 CFR 1.75(d)(1).

“Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). See also Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898, 906, 69 USPQ2d 1801, 1807 (Fed. Cir. 2004) (discussing recent cases wherein the court expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment); E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (“Interpretation of descriptive statements in a patent’s written description is a difficult task, as an inherent tension exists as to whether a statement is a clear lexicographic definition or a description of a preferred embodiment. The problem is to interpret claims ‘in view of the specification’ without unnecessarily importing limitations from the specification into the claims.”); Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1371, 65 USPQ2d 1865, 1869-70 (Fed. Cir. 2003) (Although the specification discussed only a single embodiment, the court held that it was improper to read a specific order of steps into method claims where, as a matter of logic or grammar, the language of the method claims did not impose a specific order on the performance of the method steps, and the specification did not directly or implicitly require a particular order). See also subsection IV., below. When an element is claimed using language falling under the scope of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 6th paragraph (often broadly referred to as means- (or step-) plus- function language), the specification must be consulted to determine the structure, material, or acts corresponding to the function recited in the claim. In re Donaldson, 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994) (see MPEP § 2181- MPEP § 2186).

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