LEGAL GUIDE
Written by attorney Sreenivasarao Vepachedu | May 30, 2015

INHERENCY AND ANTICIPATION

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).

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1. 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. 2. RCA Corp. Applied Digital Data Systems, Inc., 730 F.2d 1440 (Fed. Cir. 1984) 3. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001) 4. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) 5. Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004) 6. Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1348-49, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999) 7. Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed.Cir.1999) 8. SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1343-44, 74 USPQ2d 1398, 1406-07 (Fed. Cir. 2005) 9. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) 10. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) 11. Metabolite Labs., Inc. v. Lab.Corp. of Am. Holdings, 370 F.3d 1354, 1367, 71 USPQ2d 1081, 1091 (Fed. Cir. 2004) 12. 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. 13. 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. 14. MPEP § 2112(IV) 15. MPEP § 2112(IV) 16. id 17. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) 18. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) 19. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) 20. in re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977) 21. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). 22. In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 163 (CCPA 1957) 23. 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) 24. 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) 25. id 26. 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) 27. 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); 28. 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); 29. 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 30. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 31. 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 32. 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

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