Novelty: What’s New?

Patent Law

Prof Merges

2.11.08

Novelty § 102

A person is not entitled to a patentif the invention was:

• in the prior art (as defined by § 102 (a), (e), (g)) • barred under § 102 (b), (c), (d)

Novelty (Anticipation) [§ 102(a)] Versus Statutory Bars [§ 102(b)]

• Novelty/Anticipation concerned with NEWNESS – is it original to the patent applicant/patentee?

• Statutory Bars concerned with TIMELINESS – did the inventor file soon enough?

§ 102. Novelty and loss of right to patentA person shall be entitled to a patent unless (a) the invention was known or used by others in this

country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(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 . . . .

§ 102. Novelty and loss of right to patentA person shall be entitled to a patent unless

(a) the invention was known or used by others … before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication …, more than one year prior to the date of the application for patent in the United States, or . . . .

Critical Concept: the “Critical Date”

The Invention Date

Conception: Summer 1886

Reduction to practice:

7/12/1886

Novelty Critical Date Example

Filed: 6/7/1889

Unpacking the “invention date”

In re Robertson

• Page 365

• Held: Claim 76 not anticipated

• United States Patent 5,279,604 Robertson ,   et al. January 18, 1994

Mechanical fastening systems with disposal means for disposable absorbent articles

• Abstract• A disposable absorbent article with a mechanical fastening system having

an additional fastening element so as to provide convenient disposal of the absorbent article. The mechanical fastening system preferably comprises a tape tab having a first fastening element, a landing member comprising a second fastening element engageable with the first fastening element, and an additional fastening element for allowing the absorbent article to be secured in a configuration that provides convenient disposal of the absorbent article. The additional fastening element preferably comprises a second fastening element affixed to the backing surface of at least one of the tape tabs

• Inventors: Robertson; Anthony J. (Blue Ash, OH); Scripps; Charles L. (Brookfield, WI) Assignee: The Procter & Gamble Company (Cincinnati, OH) Appl. No.: 918156 Filed: July 20, 1992

Claim 76

[A] mechanical fastening system for forming side closures . . . comprising

[1] a closure member . . . comprising [a] a first mechanical fastening means for forming a closure, said first mechanical fastening means comprising [i] a

first fastening element;[2] a landing member . . . comprising [a]

a second mechanical fastening means for forming a closure with said first mechanical fastening means, [b] said second mechanical fastening means comprising a second fastening element mechanically engageable with said first element; and

[3] disposal means for allowing the absorbent article to be secured in a disposal configuration after use, said disposal means comprising [a] a third mechanical fastening means for securing the absorbent article in the disposal configuration, said third mechanical fastening means comprising [i] a third fastening element mechanically engageable with said first fastening element . . . .

In re RobertsonClaim 76:A mechanical fastening system for forming side

closures comprising[1] a closure member … comprising

[a] a first mechanical fastening means, said [means] comprising

[i] a first fastening element . . . [2] a landing member, comprising . . .[3] disposal means, comprising . . .

[1] a closure member

[2] landing member

[3] disposal means

Prior Art

United States Patent 4,895,569 Wilson,   et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam

The (Presumptive) Invention Date: Robertson application filed

United States Patent 4,895,569 Wilson ,   et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam Filed: July 20, 1992

• United States Patent 4,895,569 Wilson ,   et al. * January 23, 1990 Fastening system for a disposable absorbent garment having a tailored seam

• Abstract• A disposable absorbent garment (10) of the type having

opposed engageable waistband portions (14) separated by an intermediate portion (16), comprises a breathable elastomeric nonwoven fabric outer cover (12) and a superposable absorbent structure (32),

• Inventors: Wilson; John C. (Neenah, WI); Rajala; Gregory J. (Neenah, WI); Boland; Leona G. (Neenah, WI); Zehner; Georgia L. (Larsen, WI) Assignee: Kimberly-Clark Corporation (Neenah, WI) [*] Notice: The portion of the term of this patent subsequent to October 20, 2004 has been disclaimed.Appl. No.: 089647

• Filed: August 25, 1987

Wilson specification

“Disposal of the soiled garment . . . Is easily accomplished by folding the front panel . . . Inwardly and then fastening the rear pair of mating fastening members to one another, thus neatly bundling the garment . . .”

P. 364Anticipation under 35 U.S.C. § 102(e)

requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2D (BNA) 1051, 1053 (Fed. Cir. 1987)

Inherency – p. 364

“To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.”

• Wilson reference– Closure member– Landing member

– Disposal means with . . .

• 3rd fastening element?

• Wilson specification: “fasten rear pair of mating fastening members to one another . . .” p 368

Fed Cir

“The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. It cited no extrinsic evidence so indicating.”

“[T]he Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person. .. [T]he Board’s analysis rests upon the very kind of probability or possibility — the odd use of fasteners with other than their mates — that this court has pointed out is insufficient to establish inherency.”

Bd of Appeals opinion

“[A]n artisan would readily understand the disposable absorbent garment of Wilson . . . as being inherently capable of [making the secondary load-bearing closure means] (third fastening element) mechanically engageable with [the other snap fasteners on the fastening strip] (first fastening element)” — i.e., using the secondary closure not with its mate, but with one of the primary snap fasteners.”

Novelty § 102

A person is not entitled to a patentif the invention was:

• in the prior art (as defined by § 102 (a), (e), (g))

District Court

SRI patents anticipated by SRI International, Inc.'s ("SRI's") own prior art publication "Live Traffic Analysis of TCP/IP Gateways"

Slip op. at 2

• Because the district court correctly determined that the EMERALD 1997 paper anticipated the '212 patent, this court affirms that decision.

• SRI displayed the paper on its web site on November 10, 1997.

• SRI filed its patent application on November 9, 1998, one day before the critical date of November 10.

The Internet Society ("ISOC") posted the 1998 SNDSS call for papers on its web site. The call for papers stated that all submissions were to be made via electronic mail by August 1, 1997 with a backup submission sent by postal mail. The call for papers announcement did not include any information on confidentiality of paper submissions. On August 1, 1997, Mr. Porras sent an email to Dr. Bishop, the Program Chair for SNDSS, in response to the SNDSS call for papers. Mr. Porras attached the Live Traffic paper to his email.

• The record reflects seven instances in which Mr. Porras previously directed people to the EMERALD subdirectory to find other papers related to the EMERALD project. In four instances, Mr. Porras provided the full path and filename of the paper. In every instance, Mr. Porras directed the people to a specific paper, which included the term “emerald” in the filename

• According to the district court, the evidentiary record "indicates that the ftp://ftp.csl.sri.com site was publicly accessible." SRI Int'l, Inc., 456 F. Supp. 2d at 629. Furthermore, the district court determined that the evidence clearly showed "Mr. Porras provided this [aforementioned] FTP site to other members of the intrusion detection community both in presentations and via email." Id.

• SRI asserted that, as a matter of law, the file on SRI's FTP server containing the Live Traffic paper fell short of a publication under § 102(b). SRI contends that the Live Traffic paper sent to Dr. Bishop via email and placed on the FTP server for seven-days as a backup to this email was a private pre-publication communication.

Slip op at 15

“After review of the record, this court perceives factual issues that prevent entry of summary judgment of invalidity based on the Live Traffic paper. Specifically, this court does not find enough evidence in the record to show that the Live Traffic paper was publicly accessible and thus a printed publication under 35 U.S.C § 102(b).”