Novelty to Nonobviousness

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Novelty defining for The law(Section 102) recognizes 3 types of novelty + case studies Requirement #4: Unobviousness Patent law: 35 USC 103 35 USC 103 explanations (obviousness) History, guidelines, approaches: 1966->2007->2010 Determine the patentability flowchart

Text of Novelty to Nonobviousness

  • 1. Patentability - Novelty & Unobviousnesscriteria Req.4 nonobviousness Req.3Novelty the whole process for patent applicationChen JingFung (Grace) @csie.ntut.edu.tw2012/04/26Chapter 5, Patent It Yourself: Your Step-by-Step Guide 15th, 2011, ISBN: 14133138252010 KSR Guidelines Update , here

2. Outline The law(Section 102) recognizes 3 types ofnovelty + case studies Requirement #4: Unobviousness Patent law: 35 USC 103 35 USC 103 explanations (obviousness) History, guidelines, approaches: 1966->2007->2010 Determine the patentability flowchartGrace@iii.org.tw & cise.ntut 2 3. Patentability 4 legal requirements 4 legalLawCriteriarequirement sectionCan provide new & unexpected results?Unobiousness103 Can make of innovation in the specifictechnology?new physical feature?Novelty 102 new combination of separate old feature?new use of an old feature?Utility 101 Can be regarded as a useful one? 5 classificationsStatutoryprocessmachine manufacture compositio101classn New use Patent law 35 USC 101 or 35 USC 102 or 35 USC 103 Grace@iii.org.tw & ntut.edu 4. Requirement #3: Novelty the law criteria The law recognizes 3 types of novelty (Section102) (1) Physical (hardware or method), (2) New combination & (3) New useGrace@iii.org.tw & cise.ntut 4 5. Novelty the law criteria Physical A physical feature must be a hardware (includingoperational) difference as a part with shape, material, size, arrangement if the component Discover a critical condition of a prior art range A mordant work on dyeing states OriginalNew discovery: ittemperature range:can work (5 times): 100 150 oC127 130 oCthe law still considers this range novelGrace@iii.org.tw & cise.ntut5 6. Novelty the law criteria Physical -2 Apply a mordant to improve the dyeing process US5494491, 1996, Indigo dye process, An improved nonpolluting method of dyeing fibers/fabric includesHow it work? pre-treating the fibers with a mordant solution, preferably a natural nonpolluting mordant solutionFig ref: education.com Other applications: Natural DyeNT$180NT$160NT$800 The method comprising, (a) placing fabric.. (b) displacing oxygen.. (c) introducingRef: http://www.indigoblue.com.tw/; TW indigoblue dye (d) oxidizing 6Grace@iii.org.tw & cise.ntut 7. Novelty: New combinations - bicycle history (1818-1888)1818, Baron (German): wood frame,wheels , pushed by using feet1839, Kirkpatrick (Scottish): added crankspushed by hand to drive the rear wheel1863, Lallement (French): changed frameto steel and put pedals on front wheel1885, Starley (English): added chain driveto rear wheel1888, Dunlop (Scottish): changed tires topneumatic Ref: velocipede.net 7Grace@iii.org.tw & cise.ntut 8. Novelty: 2 examples for New combinations Combine old components Ref: stalkbicycles.com Combine 2 old concepts = (new) a frame is made of acarbon-fiber alloy novel under section 1022011 Tattoo includes Steel, 1870 bicycle frame Aluminum, Titanium, alloys,..Carbon fiber New arrangementfront wheel -> rear wheelTorque converter isplaced after thegears (novelty!!)Ref: velocipede.net 8Grace@iii.org.tw & cise.ntut 9. Novelty New combinationsapplication The advantage ofBMW M135iusing Carbon-fiber Light weight = low oilcost (Utility!!) German specialist Wheelsandmore two piece wheels combine carbon- fiber rims with ultra light alloy centers and titanium screws (~ 40% weight savings compared to a stainless steel screw). Grace@iii.org.tw & cise.ntut9 10. Novelty New combinations key point Henri Poincare : Invention consists in avoiding the constructing of useless combinations and In constructing the useful combinations which are in the infinite minority. To invent is to discern, to choose.Grace@iii.org.tw & cise.ntut10 11. Novelty the law criteria New use Section C5 define to satisfy the noveltyrequirement (newness!!) invent a new use for old item of hardware/oldprocess Dorie invents a new Copper smelter invented by vegetable cooker Jaschik (1830) Will be considered novel, since its for Use same a different usemethod your invention involves novel physical hardware Technically it cant be a new-use invention Generally speaking an invention is unobvious == it must be novel!! Grace@iii.org.tw & cise.ntut11 12. Novelty the law criteriaNew use vs. unobvious The law makes the determination in two-stepprocess (Sections 102 & 103) First, what novel features ( 102) the invention hasover the closest prior-art reference(s). Novelty can be a new physical (hardware) feature, a new combination or rearrangement of two separate old features, or a new use of an old feature Second, determine if the novelty produces anynew and unexpected results or otherwiseindicates unobviousness ( 103) Grace@iii.org.tw & cise.ntut12 13. Requirement #4: Unobviousness (1) Misconception Your invention is different from the prior artyoure entitled to get a patent on it ?? Fact Your invention should difference over prior art is considered unobvious by PTO or the courts 35 USC 103 Conditions for patentability; non-obvious subject matter The differences over prior art should not use the ordinary (common) skillSection 103 Patentability shall not be negatived manner All patent laws 13Grace@iii.org.tw & cise.ntut 14. Requirement #4: Unobviousness (2) Unobviousness means? Foreign countries (including Taiwan) require an inventive step the invention products unusual & surprising results a synergistic effect The whole > its parts (Ex. 1 + 1 > 2 )TV 1.0 broadcast TV TV 2.0 Connected TV TV 3.0 Smart TV One-way receiver TV link to Internet Video TV links to Service & devices VHSBroadcasting TV via InternetIntelligent TVWatchingCatching, Surfing, Playing Sharing, Social Interlink 14 Grace@iii.org.tw & cise.ntut 15. Unobviousness related law35 USC 103 35 USC 103 Conditions for patentability; non-obvious subject mattera) 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 btw the subject matter sought tobe patented and the prior art are such that thesubject matter as a whole would have been obviousat the time the invention was made to a personhaving ordinary skill in the art to which said subjectmatter pertains.Patentability shall not be negatived by the matter inwhich the invention was made15Grace@iii.org.tw & cise.ntut 16. Unobviousness: unobvious to Whom? PHOSIA: Person Having Ordinary Skill In TheArt Section 103 considers PHOSIA to subjectmatter pertains to measure btw in the field of the invention & Ordinary skills or all prior art in the field Ordinary skills invention (prior art) 16Grace@iii.org.tw & cise.ntut 17. The relationships with2010 KSR guidelines update35USC103 explanationsMPEP 2141& 2143, Replacing (obviousness) a TSM test to provide a more complete view of the state of the law of obviousness MPEP 2144, support a citingFed. Cir. 2008determination of obviousness based upon earlier legal Determination of precedent as a source of obviousness is depended supporting on the facts of each case e.g. structural similarity in art2007 KSR guidelinesanalysis. See MPEP 2144.09MPEP 2141 (8th ed.MPEP 2143 state the explicit2001) [Rev. 6, sep. 2007]analysis for a rejectionNoted that teaching-suggestion-motivation(TSM) test was but onepossible approach updating383 U.S. 1, 1966MPEP 2141Remain the foundation to Manual of Patent Examining Procedure (MPEP)determine obviousness17Grace@iii.org.tw & cise.ntut 18. Unobviousness: the examine law 383 U.S. 1 (1966) U.S. Supreme Court decreed in the case ofGraham v. John Deere, 383 U.S. 1, 1966; MPEP2141, that Section 103 is to be interpreted bythose steps:1. Determine the scope and content of the prior art.2. Determine the novelty of the invention.3. Determine the level of skill of artisans in the pertinent art.4. Against this background, determine the obviousness or unobviousness of the inventive subject matter.5. Also consider secondary and objective factors such as commercial success, long-felt but unsolved need, and failure of others. 18 Grace@iii.org.tw & cise.ntut 19. Unobviousness:2007 KSR Guidelines for obvious 2007 KSR Guidelines noted TSM test & identified 6 otherfactors as examples of reasonable lines A. Combining prior art elements according to known methods to yieldpredictable results; B. simple substitution of one known element for another to obtainpredictable results; C. use of a known technique to improve similar devices, methods, orproducts in the same way; D. applying a known technique to a known device, method, or productready for improvement to yield predictable results; 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 of endeavor may prompt variations of it for usein either the same field or a different one based on design incentives orother market forces if the variations are predictable to one of ordinaryskill in the art. Any rationale employed must provide a link btw the factual findings and the legal conclusion of obviousness19 Grace@iii.org.tw & cise.ntut 20. Unobviousness: 2010 KSR guidelines update (1) The Supreme Court in KSR noted that the analysissupporting a rejection under 35 U.S.C. 103 should bemade explicit. Exemplary rationales that may support a conclusion of obviousness include: A. ~ F. are as same as 2007 KSR guidelines G. Some teaching, suggestion, or motivation in the prior artthat would have led one of ordinary skill to modify theprior art reference or to combine prior art referenceteachings to arrive at the claimed invention. See MPEP 2143 for a discussion of the rationales listed abovealong with examples illustrating how the cited rationales may beused to support a finding of obviousness. See also MPEP 2144 - 2144.09 for additional guidanceregarding support for obv