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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
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Patentability -
Novelty & Unobviousness
criteria
Chen JingFung (Grace)
@csie.ntut.edu.tw 2012/04/26
Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825 2010 KSR Guidelines Update , here
the whole process for patent application
Req.3 Novelty
Req.4 nonobviousness
Outline
• 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
2 [email protected] & cise.ntut
Patentability – 4 legal requirements
[email protected] & ntut.edu
4 legal requirement
Law section
Criteria
Unobiousness 103 Can provide new & unexpected results? Can make of innovation in the specific technology?
Novelty 102 new physical feature? new combination of separate old feature? new use of an old feature?
Utility 101 Can be regarded as a useful one?
Statutory class
101
5 classifications
process machine manufacture composition
New use
Patent law 35 USC 101 or 35 USC 102 or 35 USC 103
Requirement #3: Novelty –
the law criteria
• The law recognizes 3 types of novelty (Section 102)
– (1) Physical (hardware or method),
– (2) New combination &
– (3) New use
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Novelty – the law criteria “Physical”
• A physical feature must be a hardware (including operational) difference as – a part with shape, material, size, arrangement if the
component …
• Discover a critical condition of a prior art range
5 [email protected] & cise.ntut
Original temperature range:
100 – 150 oC
New discovery: it can work (5 times):
127 – 130 oC
A mordant work on dyeing states
the law still considers this range novel
Novelty – the law criteria “Physical” -2
• Apply a mordant to improve the dyeing process
• Other applications: Natural Dye
6 [email protected] & cise.ntut
NT$180 NT$160 NT$800
Ref: http://www.indigoblue.com.tw/; TW indigoblue dye
US5494491, 1996, Indigo dye process, An improved nonpolluting method of dyeing fibers/fabric includes pre-treating the fibers with a mordant solution, preferably a natural nonpolluting mordant solution
The method comprising, (a) placing fabric.. (b) displacing oxygen.. (c) introducing… (d) oxidizing …
…
How it work?
Fig ref: education.com
1818, Baron (German): wood frame, wheels … , pushed by using feet
1839, Kirkpatrick (Scottish): added cranks pushed by hand to drive the rear wheel
1863, Lallement (French): changed frame to steel and put pedals on front wheel
1885, Starley (English): added chain drive to rear wheel
1888, Dunlop (Scottish): changed tires to pneumatic
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Novelty: “New combinations” -
bicycle history (1818-1888)
Ref: velocipede.net
Novelty: 2 examples for “New
combinations”
• Combine old components
• New arrangement
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8 Ref: velocipede.net
Ref: stalkbicycles.com
1870 – bicycle frame
2011 – Tattoo includes Steel, Aluminum, Titanium, alloys,..
Carbon fiber
Combine 2 old concepts = (new) a frame is made of a carbon-fiber alloy
novel under section 102
front wheel -> rear wheel
Torque converter is placed after the gears (novelty!!)
Novelty – “New combinations”
application
• The advantage of using Carbon-fiber
– Light weight = low oil cost (Utility!!)
9 [email protected] & cise.ntut
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).
BMW M135i
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.”
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Novelty – the law criteria “New use”
• Section C5 define to satisfy the novelty requirement (newness!!) – invent a new use for old item of hardware/old
process
– your invention involves novel physical hardware • Technically it can’t be a new-use invention
– Generally speaking • an invention is unobvious == it must be novel!!
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Dorie invents a new vegetable cooker
Copper smelter invented by Jaschik (1830)
Will be considered novel, since it’s for
a different use Use same method
Novelty – the law criteria
“New use” vs. “unobvious”
• The law makes the determination in two-step process (Sections 102 & 103) – First, what novel features (§ 102) the invention has
over 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 any new and unexpected results or otherwise indicates unobviousness (§ 103)
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Requirement #4: Unobviousness (1)
• Misconception
– Your invention is different from the prior art you’re entitled to get a patent on it ??
• Fact
– Your invention should difference over prior art is considered “unobvious” by PTO or the courts
– The differences over prior art should not use the ordinary (common) skill
– Patentability shall
• not be negatived manner [email protected] & cise.ntut
13 All patent laws
Section 103
35 USC 103 Conditions for patentability; non-obvious subject matter
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 )
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TV 1.0 broadcast TV
•One-way receiver
TV 2.0 Connected TV
•TV link to Internet Video
TV 3.0 Smart TV
•TV links to Service & devices
VHS
Broadcasting Watching
TV via Internet Catching, Surfing, Playing
Intelligent TV Sharing, Social Interlink
Unobviousness – related law
35 USC 103
• 35 USC 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 btw 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 matter in which the invention was made
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Unobviousness: unobvious to Whom?
• PHOSIA: Person Having Ordinary Skill In The Art
• Section 103 considers “PHOSIA to subject matter pertains” to measure btw
– in the field of the invention &
– “Ordinary skills” or “all prior art in the field”
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invention Ordinary skills
(prior art)
The relationships with
35USC103 explanations
(obviousness)
383 U.S. 1, 1966
MPEP §2141
Remain the foundation to determine “obviousness”
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Fed. Cir. 2008
Determination of obviousness is depended on the facts of each case
citing
2007 KSR guidelines
MPEP §2141 (8th ed. 2001) [Rev. 6, sep. 2007]
Noted that teaching-suggestion-motivation (TSM) test was but one possible approach
2010 KSR guidelines update
MPEP §2141& §2143, Replacing
a TSM test to provide a more complete view of the state of the law of obviousness
MPEP §2144, support a determination of obviousness based upon earlier legal precedent as a source of supporting e.g. “structural similarity” in art analysis. See MPEP §2144.09
MPEP §2143 state the explicit analysis for a rejection
updating
Manual of Patent Examining Procedure (MPEP)
Unobviousness: the examine law
383 U.S. 1 (1966)
• U.S. Supreme Court decreed in the case of Graham v. John Deere, 383 U.S. 1, 1966; MPEP 2141, that Section 103 is to be interpreted by those 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.
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Unobviousness:
2007 KSR Guidelines for obvious
• 2007 KSR Guidelines noted TSM test & identified 6 other factors as examples of reasonable lines A. Combining prior art elements according to known methods to yield
predictable results; B. simple substitution of one known element for another to obtain
predictable results; C. use of a known technique to 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; 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 use
in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.
– Any rationale employed must provide a link btw the factual findings and the legal conclusion of obviousness
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Unobviousness:
2010 KSR guidelines update (1)
• The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made 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 art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. • See MPEP § 2143 for a discussion of the rationales listed above
along with examples illustrating how the cited rationales may be used to support a finding of obviousness.
• See also MPEP § 2144 - § 2144.09 for additional guidance regarding support for obviousness determinations.
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20 Ref: MPEP § 2141 @ uspto.gov, 8th ed.,rev.8 , Jul 2010
Unobviousness:
2010 KSR guidelines update (2)
• This 2010 KSR Guidelines Update provides a ‘‘teaching point’’ for each discussed case (2007-2010) – Teaching point can quickly determine related cases
– Presented >1 line of reasoning that can properly be applied to a particular factual scenarios e.g. the overlapping cases … • Combining Prior Art Elements: 6 cases
• Substituting One Known Element for Another: 7 cases
• The Obvious To Try Rationale: 7 cases
– Other 4 cases offer “consideration of evidence” [email protected] & cise.ntut 21
Unobviousness:2010 KSR Guidelines
Update-Combining Prior Art Elements(1)
case yr Teaching point
In re Omeprazole Patent Litigation, 536 F.3d 1361
Fed. Cir. 2008
A general method could apply to make the claimed product within the level of skill(the ordinary artisan), the claim may nevertheless be nonobvious if the problem which had suggested use of method had been previously unknown
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356
Fed. Cir. 2008
A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined.
Ecolab, Inc. v. FMC Corp., 569 F.3d 1335
Fed. Cir. 2009
A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so.
Crocs, Inc. v. U.S. Int’l Trade Comm’n., 598 F.3d 1294
Fed. Cir. 2010
A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.
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Non-obvious case
obvious case
Unobviousness:2010 KSR Guidelines
Update-Combining Prior Art Elements(2)
case yr Teaching point
Wyers v. Master Lock Co., No. 2009–1412, — F.3d—, 2010 WL 2901839
Fed. Cir. July 22, 2010
The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314
Fed. Cir. 2009
Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose. An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements.
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Non-obvious case
obvious case
Unobviousness:2010 KSR Guidelines Update-
Substituting One Known Element for Another(1)
case yr Teaching point
In re ICON Health & Fitness, Inc., 496 F.3d 1374
Fed. Cir. 2007
When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary to consider the problem to be solved.
Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337
Fed. Cir. 2008
Analogous art is not limited to references in the field of endeavor of the invention, but also includes references that would have been recognized by those of ordinary skill in the art as useful for applicant’s purpose.
Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318
Fed. Cir. 2008
Because Internet and Web browser technologies had become commonplace for communicating and displaying information, it would have been obvious ...
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Ho
w t
o u
se r
efer
ence
Example for obviousness
Unobviousness:2010 KSR Guidelines Update-
Substituting One Known Element for Another(2)
case yr Teaching point
Aventis Pharma Deutschland v. Lupin, Ltd., 499 F.3d 1293
Fed. Cir. 2007
A chemical compound would have been obvious over a mixture containing that compound as well as other compounds where it was known or the skilled artisan had reason to … claimed compound, and separating the claimed compound from the mixture was routine in the art.
Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d 1353
Fed. Cir. 2008
A claimed compound would not have been obvious where there was no reason to modify the closest prior art lead compound to obtain the claimed compound … but prior art had been mention …
Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed compound.
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A+B ??
Non-obvious case
obvious case
Unobviousness:2010 KSR Guidelines Update-
Substituting One Known Element for Another(3)
case yr Teaching point
Procter & Gamble Co. v. Teva Pharmaceuticals USA, Inc., 566 F.3d 989
Fed. Cir. 2009
It is not necessary to select a single compound as a ‘‘lead compound’’ in order to support an obviousness rejection. However, where there was reason to select and modify the lead compound to obtain the claimed compound, but no reasonable expectation of success, the claimed compound would not have been obvious.
Altana Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999
Fed. Cir. 2009
Obviousness of a chemical compound in view of its structural similarity to a prior art compound may be shown by identifying some line of reasoning that would have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. It is not necessary for the reasoning to be explicitly found in the prior art of record, nor is it necessary for the prior art to point to only a single lead compound.
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This claim is obvious
Non-obvious case
Unobviousness:2010 KSR Guidelines
Update-The Obvious To Try Rationale(1)
case yr Teaching point
In re Kubin, 561 F.3d 1351
Fed. Cir. 2009
A claimed polynucleotide would have been obvious over the known protein that it encodes where the skilled artisan would have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ‘‘predictable’’ arts.
Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350
Fed. Cir. 2007
A claimed compound would not have been obvious where it was not obvious to try to obtain it from a broad range of compounds, any one of which could have been selected as the lead compound for further investigation, and the prior art taught away from using a particular lead compound, and there was no predictability or reasonable expectation of success in making the particular modifications necessary to transform the lead compound into the claimed compound.
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Non-obvious case
obvious case
Unobviousness:2010 KSR Guidelines
Update-The Obvious To Try Rationale(2)
case yr Teaching point
Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520 F.3d 1358
Fed. Cir. 2008
Where the claimed anti-convulsant drug had been discovered somewhat serendipitously in the course of research aimed at finding a new anti-diabetic drug, it would not have been obvious to try to obtain a claimed compound where the prior art did not present a finite and easily traversed number of potential starting compounds, and there was no apparent reason for selecting a particular starting compound from among a number of unpredictable alternatives.
Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341
Fed. Cir. 2009
A claimed compound would have been obvious where it was obvious to try to obtain it from a finite and easily traversed number of options that was narrowed down from a larger set of possibilities by the prior art, and the outcome of obtaining the claimed compound was reasonably predictable.
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Non-obvious case
obvious case
Unobviousness:2010 KSR Guidelines
Update-The Obvious To Try Rationale(3)
case yr Teaching point
Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075
Fed. Cir. 2008
A claimed isolated stereoisomer would not have been obvious where the claimed stereoisomer exhibits unexpectedly strong therapeutic advantages over the prior art racemic mixture without the correspondingly expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture were unpredictable.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324
Fed. Cir. 2009
Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning.
Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325
Fed. Cir. 2010
An obvious to try rationale may be proper when the possible options for solving a problem were known and finite. However, if the possible options were not either known or finite, then an obvious to try rationale cannot be used to support a conclusion of obviousness.
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obvious case
Non-obvious case
Unobviousness:2010 KSR Guidelines
Update - Consideration of Evidence (1)
case yr Teaching point
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342
Fed. Cir. 2007
Even though all evidence must be considered in an obviousness analysis, evidence of nonobviousness may be outweighed by contradictory evidence in the record or by what is in the specification. Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is not required.
In re Sullivan, 498 F.3d 1345
Fed. Cir. 2007
All evidence, including evidence rebutting a prima facie case of obviousness, must be considered when properly presented.
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Consider the evidence as possible as you can
Unobviousness:2010 KSR Guidelines
Update - Consideration of Evidence (2)
case yr Teaching point
Asyst Techs., Inc. v. Emtrak, Inc., 544 F.3d 1310
Fed. Cir. 2008
Evidence of secondary considerations of obviousness such as commercial success and long-felt need may be insufficient to overcome a prima facie case of obviousness if the prima facie case is strong. An argument for nonobviousness based on commercial success or long-felt need is undermined when there is a failure to link the commercial success or long-felt need to a claimed feature that distinguishes over the prior art.
Hearing Components, Inc. v. Shure Inc., 600 F.3d 1357
Fed. Cir. 2010
Evidence that has been properly presented in a timely manner must be considered on the record. Evidence of commercial success is pertinent where a nexus btw the success of the product and the claimed invention has been demonstrated.
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Business consideration
The patentability
flowchart
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A. Is invention in a statutory class (machine, article, process, composition, or new use)?
B. Is it useful?
C. Does it have novelty (new physical feature, new combination or arrangement of old feature, or new use of old feature)?
D. Would the novelty be unobvious to a PHOSITA – that is, does the novelty produce any new & unexpected result?
× PTO probably will refuse to grant a patent. See if you can use another from of offensive rights, market as a trade secret, or invent something else.
Y
Y
Y
N
N
N
N
E. Does it have one or more of the secondary indications of unobviousness?
F. If the invention is a combination of individually old features, continue with box G; otherwise go directly to the end.
G. The results achieved by the combination > ∑ (the results of the prior-art reference), i.e. synergism exists.
H. PTO is very likely to grant a patent
I. PTO is likely to grant a patent
J. PTO is probably grant a patent
Y
Y Y
N
N
possibly
E. Does it have one or more of the
secondary indications of unobviousness?
(the more the better)
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It succeeds where others failed It successfully solves a problem never before even recognized It successfully solves a problem previously thought or found
insolvable It has attained commercial success It’s classified in a crowded art where a small advance carries great
weight It omits an element in a prior art arrangement without loss of
capability It contains a modification not suggested in the prior art It provides an advantage which never before was appreciated It provides an operative result where before failure prevailed It successfully implements an ancient, but never implemented, idea It solves a long-felt, long-existing, and unsolved need It is contrary to the teachings of the prior art
G. The results achieved by the combination
> ∑ (the results of the prior-art reference),
i.e. synergism exists.
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The combination is not expressly suggested or implied by the prior art
The prior-art references could not be combined physically The references would not show the invention, even if physically
combined The prior-art references would not operate if combined > 3 references would have to be combined to show the invention The references themselves teach they should not be combined Awkward, separate, or involved steps are required to combine the
references The references are from different technical fields than each other
or from the invention It provides synergism (results > ∑ (the results of references))
Summary
• The law(Section 102) recognizes 3 types of novelty – Physical (hardware or method), New combination
& New use
– Talk two-step process (Sections 102 & 103) btw novel features (§ 102) & unobviousness (§ 103)
• Survey patentability req.4 unobviousness (section 103) – start 383 U.S. 1 (1966) -> 2007 KSR Guidelines for
obvious -> 2010 KSR guidelines update
• summary The patentability flowchart
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Homework
• Go to http://www.wipsglobal.com/ to search the related articles by your idea & group idea (at least 2 cases) – One for your idea; the other for group idea – 2 articles for group idea if your idea has been
combined – Hint:
• extend idea to show the “unusual & surprising” results • Try to describe “an inventive step”
• Team work – Determine those 2 cases by using the check lists at
patentability flowchart (P.32) - box E (P.33) & box G (P.34)
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Improve “team” innovations
• Sometimes when you innovate, you make mistakes. It is best to admit them quickly, and get on with improving your other innovations
– Steve Jobs(1955-2011)
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Inventor: Jake Zien, Pivotable Surge Protection, Invented Together at Quirky.com.
3D printer
Ref: technow.com.hk
Reference
• David Pressman, chapter 5, “Patent It Yourself: Your Step-by-Step Guide” to Filing at the U.S. Patent Office, 2011, 15th edition, ISBN-10: 1413313825 – Reference by “Previous Course Slide” record set: introduce invention,
evaluate invention, WM2Patent, Patent Requirement (novelty)
• 2010 KSR Guidelines Update, here
• Blog: http://fungsiong.blogspot.com/ – Introduce hybrid TV/Smart TV (hbbTV) including widget design,
Android technology (API), system, ecosystem, framework, service, application…,
– Agile for progressing: http://fungsiong.blogspot.com/search/label/Agile • About how to teamwork
– Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper
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