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How to Overcome Rejections
Under 35 U.S.C. § 102
2012 IP Summer Seminar
Jamie Armstrong, Partner
[email protected]
Peter Konzel, Partner
[email protected]
July 2012
© 2012 Edwards Wildman Palmer LLP & Edwards Wildman Palmer UK LLP
Patentability Standard
MPEP § 706
AN APPLICATION SHOULD NOT BE ALLOWED, UNLESS
AND UNTIL ISSUES PERTINENT TO PATENTABILITY HAVE
BEEN RAISED AND RESOLVED IN THE COURSE OF
EXAMINATION AND PROSECUTION, SINCE OTHERWISE THE
RESULTANT PATENT WOULD NOT JUSTIFY THE STATUTORY
PRESUMPTION OF VALIDITY . . . THE STANDARD TO BE
APPLIED IN ALL CASES IS THE "PREPONDERANCE OF THE
EVIDENCE" TEST.
IN OTHER WORDS, AN EXAMINER SHOULD REJECT A
CLAIM IF, IN VIEW OF THE PRIOR ART AND EVIDENCE OF
RECORD, IT IS MORE LIKELY THAN NOT THAT THE CLAIM IS
UNPATENTABLE.
1
1
How to Overcome a Prior Art Rejection under 35
USC § 102?
SHORT ANSWER:
SHOW THAT IT IS MORE LIKELY THAN NOT THAT THE
CLAIM IS PATENTABLE!
2
35 USC § 102 - Lack of Novelty
REJECTIONS FOR LACK OF NOVELTY OR ANTICIPATION ARE
BASED ON 35 U.S.C. § 102.
♦ The claimed invention must have been publicly known and
publicly available before the invention thereof by the Applicant.
♦ To be anticipating, each and every element of a claim, as those
elements are arranged in the claim, must be explicitly or
inherently described in a single prior art reference.
WE WILL DISCUSS REJECTIONS UNDER 35 USC §§ 102(a), 102(b), AND 102(e).
We will not be discussing sections:
102(c) – Abandonment of the invention;
102(d) – Patented in a foreign country more than 12 months before filing in the US;
102(f) – False Inventorship
102(g)- Interference proceedings.
3
2
35 U.S.C. §102(a)
A person shall be entitled to a patent unless—
a) the invention was known or used by others in this country, or
b) patented or described in a printed publication in this or a foreign
country,
c) before the invention thereof by the applicant for patent,
or …
4
35 U.S.C. §102(a)
With regard to a) the invention being known or used by others in this
country;
1.) Section 102(a) applies only to the work of others, NOT the applicant’s
own work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).
♦
♦
If all inventors are the same, then no rejection under §102(a) is available.
A common assignee is insufficient to overcome a rejection under 102(a) if
there is different inventorship.
2.) Section 102(a) requires public knowledge or use, and pertains only to
activities occurring in the United States.
♦ Activities in NAFTA and WTO member countries are not included.
5
3
35 U.S.C. §102(a)
With regard to b) the invention being patented or described in a
printed publication in this or a foreign country,
♦ The patents and publications can include printed
publications, scientific articles, etc. published anywhere in
the world – to include publications available on the Internet
♦ However, the publications must be sufficiently publicly
available/accessible.
6
35 U.S.C. §102(a)
With regard to c) the activities must have occurred before the
invention thereof by the applicant for patent,
♦
♦
Despite current patent reform efforts, the US remains a first
to invent country;
Additionally, prior invention can only be established in the
US, or in NAFTA or WTO countries.
7
4
Overcoming
35 U.S.C. §102(a) Rejections
HOW DO YOU OVERCOME A 102(a) Rejection?
(1) Establish prior invention;
(2) Show that prior invention was not “by another;”
(3) Persuasively argue that claims are patentably
distinguishable;
(4) Show that cited reference is not enabled; or
(5) Amend the claims to distinguish over the prior art.
8
Overcoming 35 U.S.C. §102(a)
In overcoming a ground of rejection keep in mind that Prosecution
History Estoppel may prevent you from later making certain
arguments that are inconsistent with arguments that were previously
made during prosecution.
Additionally, in making any amendments to the claims for a
“substantial reason related to patentability”, always consider the
effects of Prosecution History Estoppel and the Festo decisions.
9
5
Overcoming
35 U.S.C. §102(a) Rejections
Prosecution History Estoppel
♦ Prosecution history estoppel relates to statements made, positions
taken, and amendments made to the claims during prosecution in
an effort to obtain allowance, which may later bar the availability of
equivalents during subsequent, post-grant proceedings.
10
Overcoming
35 U.S.C. §102(a) Rejections
The Festo decisions:
♦ Although an amendment to a claim during prosecution may not
be a complete bar to equivalents, there is a rebuttable
presumption that the patentee surrendered the availability of
equivalents to the amended subject matter.
♦ Along this line, “a narrowing amendment made to comply with
any provision of the Patent Act, including § 112, may invoke an
estoppel.” Festo VIII, 533 U.S. 722, 736 (2002); Festo IX, 344
F. 3d 1359 (Fed. Cir. 2003).
♦ Voluntary amendments can also bar claims to equivalents.
11
6
Overcoming
35 U.S.C. §102(a) Rejections
The Festo decisions:
♦ In applying the Festo rationale, a court will presume that the
patentee has surrendered the entire territory between the
original claim limitation and the amended claim limitation.
♦ However, the presumption is rebuttable by showing that, “at the
time of the amendment one skilled in the art could not
reasonably be expected to have drafted a claim that would have
literally encompassed the alleged equivalent.” Festo VIII, 35
U.S.C. at 741.
12
Overcoming
35 U.S.C. §102(a) Rejections
The Festo decisions:
♦ Three ways to overcome this presumption.
1.
Show that the equivalent would have been unforeseeable at
the time of the amendment.
For example, show that later developed technology or
technology that was not known in the relevant art would not
have been foreseeable, but old technology would more likely
have been foreseeable (but not always).
13
7
Overcoming
35 U.S.C. §102(a) Rejections
The Festo decisions:
2.
Show that the rationale underlying the amendment bore no
more than a tangential relation to the equivalent in question,
which is to say that the reason for the narrowing amendment
was “peripheral, or not directly relevant, to the alleged
equivalent.”
However, what is considered “tangential”? . . . The Court did
not say!
Thus, a seemingly minor amendment made to avoid prior art
that contains the equivalent in question may not be
tangential.
14
Overcoming
35 U.S.C. §102(a) Rejections
The Festo decisions:
3.
Show that there was some other reason suggesting that the
patentee could not reasonably be expected to have
described the insubstantial substitute in question.
For example, “[s]ome reason, such as the shortcoming of
language why the patentee was prevented from describing
the alleged equivalent when it narrowed the claim.” Festo
IX.
15
8
Overcoming
35 U.S.C. §102(a) Rejections
HOW DO YOU ESTABLISH PRIOR INVENTION? – 1. ) Establish Priority
119/120
♦ Section 119(a) – An Applicant’s previously filed foreign application is treated as if
filed in the US on the filing date of the foreign application – the foreign filing date
can be used to overcome a reference.
♦ Section 119(e)/120 - The filing date of an earlier filed U.S. provisional or
nonprovisional application is the effective filing date.
♦ However, for a CIP, only those claims that are fully supported by the earlier
parent application enjoy the filing date of that earlier parent application.
♦ Under Section 102(e), the effective filing date of an application is the filing date of
the U.S. application, which includes the filing date of a PCT application
designating the U.S. and which is published in the English language.
♦ Finally, Applicant’s PCT application, which includes a priority claim to a foreign
application, will be treated as if filed in the US as of the date of the foreign
application.
16
Overcoming
35 U.S.C. §102(a) Rejections
HOW DO YOU ESTABLISH PRIOR INVENTION – 1.) Establish Priority
HOW DO YOU PERFECT PRIORITY?
♦ FILE CERTIFIED COPY OF FOREIGN PRIORITY
DOCUMENTS; OR
♦ ENSURE COPY FORWARDED TO USPTO AS
DESIGNATED/ELECTED OFFICE BY INTERNATIONAL
BUREAU (PCT)
♦ SUBMIT TRANSLATIONS!
17
9
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – Cited Art
A CITED US REFERENCE INCLUDING A CLAIM TO A PRIOR
FILED US OR INTERNATIONAL APPLICATION DESIGNATING
THE US OBTAINS THE BENEFIT OF THE PRIOR FILED US/INT
APPLICATION – The prior filed Application is a US application.
18
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – Cited Art
A CITED US/INTERNATIONAL REFERENCE INCLUDING A CLAIM
TO A PRIOR FOREIGN APPLICATION DOES NOT OBTAIN THE
BENEFIT OF THE PRIOR FILED FOREIGN APPLICATION!!!
19
10
Overcoming
35 U.S.C. §102(a) Rejections
ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind”
37 CFR § 1.131 provides for filing a declaration “to establish
invention of the subject matter of the rejected claim prior to the
effective date of the reference or activity on which the rejection is
based.”
20
Overcoming
35 U.S.C. §102(a) Rejections
ESTABLISHING PRIOR INVENTION - 2.) “Swearing behind”
Who may file declarations under 35 U.S.C. § 1.131?
♦ Inventor
♦ Owner of a patent under re-examination
♦ Party qualified under 37 C.F.R. §§ 1.42 (dead inventor), 1.43
(insane or legally incapacitated inventor), or 1.47
(uncooperative inventor).
♦ The assignee or other party in interest when it is not possible to
produce the affidavit or declaration of the inventor. Ex parte
Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903).
21
11
Overcoming
35 U.S.C. §102(a) Rejections
ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind”
What is needed to/How do you Swear Behind?
♦ Show actual reduction to practice prior to the effective date of
the reference; or
♦ Show conception of the invention prior to the effective date of
the reference AND due diligence up to the reduction to practice
(constructive or otherwise).
♦ Drawings, records or other evidence must accompany and form
part of the affidavit or, if missing, must explain why such
evidence is missing – Lab books, journals, sketches, invention
disclosure forms, records of experiments, etc.
22
Overcoming
35 U.S.C. §102(a) Rejections
ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind”
Where can prior inventive activities be established to Swear
Behind?
♦ “Prior invention may not be established under this section in any
country other than the United States, a NAFTA country, or a
WTO member country.”
♦ Cannot establish prior invention if rejection is based on a U.S.
patent or published application that claim the same patentable
invention.
♦ Must invoke an INTERFERENCE.
23
12
Overcoming
35 U.S.C. §102(a) Rejections
HOW DO YOU SHOW AN INVENTION IS “NOT BY ANOTHER”
♦ Add/remove inventors - if possible;
♦ Submit Declaration under 37 CFR § 1.132
24
Overcoming
35 U.S.C. §102(a) Rejections
HOW DO YOU SHOW AN INVENTION IS “NOT BY ANOTHER”
37 CFR § 1.132 provides for filing a declaration traversing the rejections or
objections for a reason “not otherwise provided for”.
♦ Allows Applicants to remove cited art by filing a declaration stating that
relevant portions of the cited art describes the inventor own work.
♦ In sum, it is a declaration of the inventor that the cited reference is merely
describing the inventor’s own work.
♦ Can include assertions that the inventors of a cited reference learned of, or
derived, the invention from the Applicant.
♦ The declaration does not need to establish reduction to practice – conception
is sufficient.
♦ Finally, an affidavit from all of the inventors is not required.
♦ 1.132 declarations are typically used to show that the invention was “not by
another” in the context of scientific publications, technical journals, Joint
Research Agreements, etc. where a number of authors may be identified on a
reference publication.
25
13
Overcoming
35 U.S.C. §102(a) Rejections
Prosecution Tips
♦
♦
♦
♦
♦
Prepare multiple claim sets ranging from very broad to more narrow to avoid
rejections and amendments – estoppel and Festo.
Seek to minimize the record during prosecution!
♦ If you can remove a reference by perfecting a priority claim, do it!
♦ If you can show “not by another” by properly adding/removing an inventor, do
it!
Show differences between claimed invention and cited art – prior art structures
are not arranged as in the claims, alleged inherent disclosures are not necessarily
present, etc.
Use § 1.132 declarations to overcome public use and/or on sale bars, if
applicable. For example, experimental exception, non-enabling disclosure, non
reduction to practice, not ready for patenting, etc.)
♦ Demonstrate knowledge was not “by others”
♦ Demonstrate knowledge that activities were not “in this country”
Use § 1.131 declarations to “swear behind” when you can show prior reduction to
practice or prior conception and due diligence to reduction to practice.
26
Overcoming
35 U.S.C. §102(a) Rejections
Prosecution Tips
Argue/Amend/Submit Declarations only when necessary and do so
with caution – remember prosecution history estoppel and loss of
equivalents under Festo!
♦ Include statements that claims amendments are made to correct
other issues, for example, language/grammatical errors, and that
amendments are made without the intention of surrendering
availability of equivalents.
♦ Reserve right, without prejudice, to resubmit the original subject
matter in the application, or in a continuing application.
♦
27
14
35 U.S.C. §102(b)
♦
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 …
28
35 U.S.C. §102(b)
CONSTITUTES A STATUTORY BAR TO PATENTABILITY
♦ CANNOT SWEAR BEHIND REFERENCE
♦ INVENTORS OWN PUBLICATIONS CAN BE USED AGAINST
HIM/HER (IF MORE THAN ONE YEAR)
♦
29
15
35 U.S.C. §102(b)
b)
the invention was . . . in public use . . . more than one year prior
to the date of the application for patent in the United States, or
…
30
35 U.S.C. §102(b)
“PUBLIC USE” IS NOT PUBLIC KNOWLEDGE
♦ PRIVATE USE WITH AN EXPECTATION OF PRIVACY
♦ USE PURSUANT TO A NON-DISCLOSURE OR
CONFIDENTIALITY AGREEMENT
♦ EXPERIMENTAL EXCEPTION
31
16
35 U.S.C. §102(b)
b)
the invention was . . . on sale in this country, more than one year
prior to the date of the application for patent in the United States
…
32
35 U.S.C. §102(b)
EXPERIMENTAL EXCEPTION (SOME COMMERCIAL
EXPLOITATION PERMISSIBLE, BUT NOT MARKET TESTING
TO GAUGE DEMAND)
♦ IF REDUCED TO PRACTICE – NOT EXPERIMENTAL USE. See,
e.g., RCA Corp. v. Data Gen. Corp., 887 F.2d 1056 (Fed. Cir.
1989)
♦ TO CONDUCT EXPERIMENTATION MUST HAVE BEEN
PRIMARY PURPOSE OF INVENTOR AT THE TIME OF THE
SALE. (See, e.g., Allen Eng’g. Corp. v. Bartell Indus., Inc., 299
F.3d 1336 (Fed. Cir. 2002)
♦
33
17
35 U.S.C. §102(b)
♦
TWO-PRONG TEST FOR “ON SALE” BAR:
♦ PRODUCT MUST BE THE SUBJECT OF A COMMERCIAL
OFFER FOR SALE AND
♦ THE INVENTION MUST BE READY FOR PATENTING BY
REDUCTION TO PRACTICE OR INVENTOR HAD DRAWINGS
OR OTHER DESCRIPTIONS THAT WERE “SUFFICIENTLY
SPECIFIC” TO ENABLE THOSE SKILLED IN THE ART TO
PRACTICE THE INVENTION.
♦ Pfaff v. Wells Elec., Inc., 525 U.S. 55 (1998).
34
35 U.S.C. §102(b)
b)
the invention …
35
18
35 U.S.C. §102(b)
Assert by § 1.132 affidavit and support with evidence that:
♦ Non-enabling disclosure.
♦ Not reduced to practice.
♦
36
35 U.S.C. §102(b)
. . . in public use or on sale in this country . . .
37
19
35 U.S.C. §102(b)
DOES NOT APPLY IF MANUFACTURE AND DELIVERY
OCCUR OUTSIDE OF THE U.S.
38
Overcoming
35 U.S.C. §102(b) Rejections
1)
2)
3)
4)
Persuasively arguing that claims are patentably distinguishable
Amend the claims to distinguish over the prior art
Perfect priority under 35 U.S.C. § 120 or
Perfect priority under 35 U.S.C. § 119(e)
39
20
Overcoming
35 U.S.C. §102(b) Rejections
♦
In traversing an Examiner’s grounds for rejection keep in mind
Prosecution History Estoppel that may estop a patentee from
making certain arguments that are inconsistent with arguments
made during prosecution
40
Overcoming
35 U.S.C. §102(b) Rejections
♦
In making any claim narrowing amendments to the claims for a
“substantial reason related to patentability”, one must always
consider the effect of Prosecution History Estoppel and the
Festo decisions
41
21
Overcoming
35 U.S.C. §102(b) Rejections
♦
Prosecution History Estoppel
♦ Statements made, positions taken, and amendments to the
claims during the prosecution of an application to gain
allowance may bar the availability of equivalents during
subsequent, post-grant proceedings
42
Overcoming
35 U.S.C. §102(b) Rejections
The Festo decisions:
♦ Although an amendment to a claim during prosecution may not
be a complete bar, there is a rebuttable presumption that the
patentee surrendered the availability of equivalents to the
amended subject matter
♦ “a narrowing amendment made to comply with any provision of
the Patent Act, including § 112, may invoke an estoppel.” Festo
VIII, 533 U.S. 722, 736 (2002); Festo IX, 344 F. 3d 1359 (Fed.
Cir. 2003)
♦ Voluntary amendments are included, too
43
22
Overcoming
35 U.S.C. §102(b) Rejection
Section 120 provides the benefit of an earlier filing of an
application filed in the U.S.
♦ The effective filing date is the same as the earliest filing date in the
line of CON or DIV applications. However. . .
♦ For a CIP, only those claims that are fully supported by the earlier
parent application enjoy the filing date of that earlier parent
application
♦
44
Overcoming
35 U.S.C. §102(b) Rejections
♦
Section 119(e) provides the benefit of an earlier filing of a U.S.
provisional application
45
23
35 U.S.C. §102(b)
Prosecution Tips
Amend with caution!
♦ Prepare multiple claim sets ranging from very broad to more
narrow to avoid rejections and amendments
♦ In arguing that the claims are patentably distinguishable,
remember prosecution history estoppel
♦ Include a generic statement that claims are made without the
intention of surrendering the availability of equivalents to the
amended subject matter
♦ Compare effective filing date with publication date
♦
46
35 U.S.C. §102(b)
Prosecution Tips
♦
Use § 1.132 declarations to overcome public use and/or on sale
bars, if applicable. For example, experimental exception, nonenabling disclosure, non reduction to practice, not ready for
patenting, etc.)
47
24
35 USC §102(e)
A person shall be entitled to a patent unless—
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 …
48
35 USC §102(e)
♦
A person shall be entitled to a patent unless—
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 …
49
25
35 USC §102(e)
A person shall be entitled to a patent unless—
e)
the invention was described in - . . . (2) a patent granted on
an application for patent by another filed in the United States
before the invention by the applicant for patent, …
50
35 USC §102(e)
A person shall be entitled to a patent unless—
e)
. . . 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 …
51
26
Overcoming
35 U.S.C. §102(e) Rejections
HOW TO OVERCOME § 102(e)?
(1) Establish prior invention;
♦
♦
(2)
Show that prior invention is not by another
♦
♦
(3)
(4)
(5)
Perfect priority under 35 U.S.C. § 119(a)-(d) or under 35 U.S.C. §§ 119(e)
or 120
Submit Affidavit under 37 CFR 1.131 to “swear behind” cited reference
Add/Remove inventors, if possible
File a Declaration under 37 CFR § 1.132 showing that pertinent teachings
of the cited reference are the Applicant’s own work
Persuasively argue that claims are patentably distinguishable
Show that cited reference is not enabled; or
Amend the claims to distinguish over the prior art
52
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – Perfecting Priority
♦ Section 119(a) – An Applicant’s previously filed foreign application is
treated as if filed in the US on the filing date of the foreign application –
the foreign filing date can be used to overcome a reference
♦ However, unless it claims benefit to a prior US application (US
Con/Div/Provisional/Int. App.), a cited art reference does not obtain the
benefit of a foreign priority claim!
♦ Section 119(e) - The filing date of an earlier filed U.S. provisional
application is the effective filing date
♦ Section 102(e)- The effective filing date of an Applicant’s application is
the filing date of the U.S. application, which includes the filing date of a
PCT application designating the U.S. and which is published in the
English language
♦ Applicant’s PCT application which includes a foreign priority claim will
be treated as if filed in the US as of the date of the foreign application
53
27
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – Perfecting Priority
♦ Section 120 provides the benefit of an earlier filing of an
application filed in the U.S.
♦ The effective filing date is the same as the earliest filing date in
the line of CON or DIV applications
♦ For a CIP, only those claims that are fully supported by the earlier
parent application enjoy the filing date of that earlier parent
application
54
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – Perfecting Priority
♦ A CITED US REFERENCE INCLUDING A CLAIM TO A PRIOR
FILED US/INT APPLICATION DESIGNATING THE US OBTAINS
THE BENEFIT OF THE PRIOR FILED US/INT APPLICATION!!!
55
28
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – Perfecting Priority
♦ A CITED US/INTERNATIONAL REFERENCE INCLUDING A CLAIM
TO A PRIOR FOREIGN APPLICATION DOES NOT OBTAIN THE
BENEFIT OF PRIOR FILED FOREIGN APPLICATION!!!
56
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – MPEP 706.02(f)
57
29
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – Perfecting Priority
WHAT TO DO?
♦ FILE CERTIFIED COPY OF FOREIGN PRIORITY
DOCUMENTS; OR
♦ ENSURE COPY FORWARDED TO USPTO AS
DESIGNATED/ELECTED OFFICE BY INTERNATIONAL
BUREAU (PCT)
♦ SUBMIT TRANSLATIONS TO PERFECT PRIORITY!
58
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – “Swearing behind”
37 CFR § 1.131 provides for filing a declaration “to establish
invention of the subject matter of the rejected claim prior to the
effective date of the reference or activity on which the rejection is
based.”
59
30
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – “Swearing behind”
Who may file declarations under 35 U.S.C. § 1.131?
♦ Inventor
♦ Owner of a patent under re-examination
♦ Party qualified under 37 C.F.R. §§ 1.42 (dead inventor), 1.43
(insane or legally incapacitated inventor), or 1.47
(uncooperative inventor)
♦ The assignee or other party in interest when it is not possible to
produce the affidavit or declaration of the inventor. Ex parte
Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903)
60
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – “Swearing behind”
Where can prior inventive activities be established?
♦ “Prior invention may not be established under this section in any
country other than the United States, a NAFTA country, or a
WTO member country.”
♦ Cannot establish prior invention if rejection is based on a U.S.
patent or published application that claim the same patentable
invention
♦ Must invoke an INTERFERENCE
61
31
Overcoming
35 U.S.C. §102(e) Rejections
ESTABLISHING PRIOR INVENTION – “Swearing behind”
How do you show / What is needed to establish prior invention?
♦ Show actual reduction to practice prior to the effective date of
the reference; or
♦ Show conception of the invention prior to the effective date of
the reference AND due diligence from prior to the effective date
of the cited reference and reduction to practice (constructive or
otherwise)
♦ Drawings or records must accompany and form part of the
affidavit or must explain why such evidence is missing – Lab
books, journals, sketches, invention disclosure forms, records of
experiments, etc.
62
Overcoming
35 U.S.C. §102(e) Rejections
SHOWING AN INVENTION IS “NOT BY ANOTHER”
♦ Add/remove inventors - if possible
♦ Submit Declaration under 37 CFR § 1.132
63
32
Overcoming
35 U.S.C. §102(e) Rejections
SHOWING AN INVENTION IS “NOT BY ANOTHER”
37 CFR § 1.132 provides for filing a declaration traversing the rejections or
objections for a reason “not otherwise provided for”
♦ Remove cited art by filing a declaration stating that relevant portions of
the cited art describes the inventor’s own work
♦ In sum, it is a declaration of the inventor that the cited reference is
merely describing the inventor’s own work
♦ Declaration that Applicant of cited reference learned of, or derived,
invention from current inventor
♦ Do not need to establish reduction to practice – conception is
sufficient.
♦ Do not need an affidavit from all of the inventors
Typically used to show invention was “not by another” in the context of
scientific publications, technical journals, Joint Research Agreements, etc.
64
Overcoming
35 U.S.C. §102(e) Rejections
Prosecution Tips
♦
♦
♦
♦
♦
Prepare multiple claim sets ranging from very broad to more narrow to avoid
rejections and amendments.
Seek to minimize the record during prosecution!
♦ If you can remove a reference by perfecting a priority claim, do it!
♦ If you can show “not by another” by properly adding/removing an inventor, do
it!
Show differences between claimed invention and cited art – prior art structures
are not arranged as in the claims, alleged inherent disclosures are not necessarily
present, etc.
Use § 1.132 declarations to overcome public use and/or on sale bars, if
applicable. For example, experimental exception, non-enabling disclosure, non
reduction to practice, not ready for patenting, etc.)
♦ Demonstrate knowledge was not “by others”
♦ Demonstrate knowledge was not “in this country”
Use § 1.131 declarations to “swear behind” when you can show prior reduction to
practice or prior conception and due diligence to reduction to practice.
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Overcoming
35 U.S.C. §102(e) Rejections
Prosecution Tips
Argue/Amend/Submit Declarations only when necessary and do so
with caution – remember prosecution history estoppel and
equivalents!
♦ Include statements that claims amendments are made to correct
other issues, for example, language/grammatical errors, and that
amendments are made without the intention of surrendering
available of equivalents
♦ Reserve right, without prejudice, to resubmit the original subject
matter in the application, or in a continuing application
♦
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35 U.S.C. §102
SPECIFIC REJECTIONS
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34
Overcoming
35 U.S.C. §102 Rejections
Examiners are required to give the claims their broadest
reasonable interpretation and
♦ Give the words in a claim their “plain meaning”, or “ordinary and
customary meaning” by those skilled in the art unless they are
defined in the specification
♦
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Overcoming
35 U.S.C. §102 Rejections
PRODUCT-BY PROCESS CLAIMS:
♦ “The patentability of a product does not depend on its method of
production. If the product in the product-by-process claim is the
same or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a
different process.”
♦ In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985)
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35
Overcoming
35 U.S.C. §102 Rejections
PRODUCT-BY PROCESS CLAIMS:
♦ The burden shifts to applicant to provide evidence showing
novel and unobvious differences between the claimed invention
and the prior art
♦ In ex parte Gray, the Board of Interferences and Patent Appeals
stated that “the dispositive issue is whether the claimed factor
exhibits any unexpected properties compared with the factors
disclosed by the prior art
♦ 37 CFR 1.132
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Overcoming
35 U.S.C. §102 Rejections
APPARATUS CLAIMS:
♦ Claims directed to an apparatus should be distinguished from
the prior art in terms of structure not function
♦ Means-plus-function claims can be problematic
♦ Preamble language of manner of operation not enough
♦ Including material or article worked on by the apparatus is not
enough
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36
Overcoming
35 U.S.C. §102 Rejections
“A generic claim cannot be allowed to an applicant if the prior art
discloses a species falling within the claimed genus.”
♦ In re Slayter, 276 F.2d 408, 411 (CCPA, 1960)
♦
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Overcoming 35 U.S.C. §102 Rejections
♦
Show difference between prior art species and generic claim or
amend claim to avoid generic claim
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37
Overcoming
35 U.S.C. §102 Rejections
“[W]hen, as by a recitation of ranges or otherwise, a claim covers
several compositions, the claim is ‘anticipated’ if one of them is in
the prior art.”
♦ Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir., 1985)
♦ Examiners will reject if within, overlapping or touching the
claimed range if the prior art specification discloses the range with
“sufficient specificity”
♦
74
Overcoming
35 U.S.C. §102 Rejections
Show that reference does not disclose the subject matter with
“sufficient specificity” or provide evidence of unexpected results or
amend so that prior art range is not within, overlapping or
touching the claimed range
♦ CAVEAT: Must have adequate disclosure in own specification
♦
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38
Overcoming
35 U.S.C. §102 Rejections
NON-ANALOGOUS ART/TEACHING AWAY FROM INVENTION:
♦ Not germane to a 102 rejection!
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Overcoming
35 U.S.C. §102 Rejections
QUESTIONS?
BOS111_12501507
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