Never so obscure . . .
102/103 Prior Art and
Analogous Arts
Patent Law – Professor Merges
3.17.08
Sources of 102/103 Art
• 35 USC 103: “differences between
subject matter sought to be
patented and the prior art”
• Graham: “scope and content of the
prior art”
• What is “the prior art” or purposes
of 103?
Gradual expansion of 102/103
Prior art
• 102(a): not controversial
• 102(b)
–The problem of “prior art” that is not
actually in existence prior to the
invention
Recall section 103: “. . . At the time
the invention was made . . .”
§ 103. Conditions for patentability; nonobvious 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.
Baxter
Cullis
Invention
Date
5.14.75:
Cullis
Critical Date
Suaudeau and Ito
public use
activity
5.14.76:
Cullis Filing
Date
WL Gore v. Garlock
Gore
Gore
Invention Critical Date
Date
Cropper on
sale/in public use
activity
Gore Filing
Date
In re Foster (1965), p. 785: 102(b) IS a proper
source of 103 prior art
In re Bass, 474 F.2d 1276, 177 U.S.P.Q. (BNA)
178 (C.C.P.A. 1973)
– 102(g) IS a proper source of 103 prior art
In re Foster, 343 F.2d 980, 988, 145
U.S.P.Q. (BNA) 166 (C.C.P.A. 1965):
There appears to be no dispute about the operation of
this statute in “complete anticipation” situations but
the contention seems to be that 102(b) has no
applicability where the invention is not completely
disclosed in a single patent or publication, that is to
say where the rejection involves the addition to the
disclosure of the reference of the ordinary skill of the
art or the disclosure of another reference which
indicates what those of ordinary skill in the art are
presumed to know, and to have known for more than
a year before the application was filed. . . .
In re Foster (cont’d)
On logic and principle we think this
contention is unsound, and we also
believe it is contrary to the patent law
as it has actually existed since at least
1898.
First, as to principle, . . . we cannot see
that it makes any difference how [the
public] came into … possession [of
the information], whether by a public
use, a sale, a single patent or
publication, or by combinations of
one or more of the foregoing. In
considering this principle we
assume, of course, that by these
means the invention has become
obvious to that segment of the
“public” having ordinary skill in the
art.. . . .
Hazeltine Research, Inc. V.
Brenner, 382 U.S. 252
(1965)
102(e) as a source of 103
Prior Art
Prior art
Regis filed Dec. 23. 1957
• Carlson Patent, 2,491,644: Issued 1949
The Wallace patent, however, was
pending in the Patent Office when
the Regis application was filed.
The Wallace application had been
pending since March 24, 1954,
nearly three years and nine months
before Regis filed his application
and the Wallace patent was issued
on February 4, 1958, 43 days after
Regis filed his application. – p. 731
While we think petitioners’ argument
with regard to § 102(e) is
interesting, it provides no reason
to depart from the plain holding
and reasoning in the Milburn case.
The basic reasoning upon which
the Court decided the Milburn case
applies equally w ell here. When
Wallace filed his application, he
had done what he could to add his
disclosures to the prior art. -- 732
Oddzon Prods v. Just Toys, Inc.
• Design patent
–Same standards for 102 and
103, in general
Is 102(f) “prior art”?
• Book, page 779
– Is 102(f) more like 102(a), (b), (e), and (g)?
– Or more like (c) and (d) – “loss of right?
– Or not like any other provision?
• Dictum in In re Bass: 102(f) is not about
“prior art”
Oddzon holding
• District ct: prior disclosures to eventual
patentee were 102(f) prior art
– Recall Campbell v Spectrum Automation
– “belt buckle” case
• Affirmed here: continues expansion of
102 art for 103 purposes
Obscure prior art and internal
research teams
• Expansion of 102/103 prior art
• Technical definition of “inventive
entities”
• Problem!
The 1984 Amendment to 103
• Added what is now 103(c)
“Subject matter developed by another
[inventive entity], which qualifies as prior
art only under 102(e), (f) or (g), shall NOT
preclude patentability where subject
matter and claimed invention were owned
by same person or subject to obligation of
assignment to same person at time
invention was made”
“[O]wned by same person or
under obligation to assign”: the
importance of Contracts!
• Same prior art that would invalidate
patent when created by independent
parties will be REMOVED from prior art
by contractual agreement by all parties
Legislative activity
• Cooperative Research and Technology
Act of 2004, P.L. 108-453, Dec., 2004
• Extended section 103(c) to cover
situation of contractual joint research
projects
Recent Legislative Activity
The same benefit available under 35 USC
§ 103(c) will also apply to joint research
teams where “the claimed invention
was made by or on behalf of parties to
a joint research agreement that was in
effect on or before the date the claimed
invention was made.”
(2) For purposes of this subsection, subject
matter developed by another person and
a claimed invention shall be deemed to
have been owned by the same person or
subject to an obligation of assignment to
the same person if (A) the claimed invention was made by or
on behalf of parties to a joint research
agreement that was in effect on or before
the date the claimed invention was made;
(B) the claimed invention was made
as a result of activities
undertaken within the scope of
the joint research agreement; and
(C) the application for patent for the
claimed invention discloses or is
amended to disclose the names of
the parties to the joint research
agreement.
(3) For purposes of paragraph
(2), the term "joint research
agreement" means a written
contract, grant, or cooperative
agreement entered into by two
or more persons or entities for
the performance of
experimental, developmental,
or research work in the field of
the claimed invention.
Section 103(c) of title 35, United States
Code, is amended to read as follows:
``(c)(2) For purposes of this
subsection, subject matter developed
by another person and a claimed
invention shall be deemed to have been
owned by the same person or subject
to an obligation of assignment to the
same person if--
``(A) the claimed invention was made by
or on behalf of parties to a joint
research agreement that was in effect
on or before the date the claimed
invention was made;
``(B) the claimed invention was made
as a result of activities undertaken
within the scope of the joint research
agreement; and
``(C) the application for patent for the
claimed invention discloses or is
amended to disclose the names of the
parties to the joint research agreement.
``(3) For purposes of paragraph (2), the term
`joint research agreement' means a
written contract, grant, or cooperative
agreement entered into by two or more
persons or entities for the performance of
experimental, developmental, or research
work in the field of the claimed invention.''
Other 103 Issues
• 103(b)
– Biotech-specific provision
– Limited uses
United States Patent 4,683,949 Sydansk , et al.
August 4, 1987 Conformance improvement in a
subterranean hydrocarbon-bearing formation
using a polymer gel
Conformance improvement is achieved in a
subterranean hydrocarbon-bearing formation
using a gel. The gel components are combined
at the surface and injected into the desired
treatment zone via a wellbore
Inventors: Sydansk; Robert D. (Littleton, CO);
Argabright; Perry A. (Larkspur, CO) Assignee:
Marathon Oil Company (Findlay, OH)
Analogous arts: tests
• From same field?
• Pertinent to problem solved?
Sydansk reference
• Board of Appeals: same field (oil
extraction)
• Federal Circuit: wrong!
– Storage vs extraction
Sydansk: Same Problem?
• Differences in conditions governing
problem to be solved
– Underground conditions different from storage
tanks
– PHOSITA faced with Clay’s problem would
not look in oil extraction art – AGREE?
Counterpoint: In re Paulsen
• Hinge in laptop computer claim
• Other mechanical arts relevant; “problem
not unique to portable computers . . .”
– Importance of problem focus
“General Principles”
• In re Mariani, 177 F.2d 293
Cust. & Pat.App. 1949
• Application was properly rejected with
respect to certain claims for patent for fruit
juice extractor, where features claimed to be
novel were not in fact novel, but were
scientific necessities, or, at least,
scientifically desirable and well known to
those skilled in the art, and had been used in
a fishing reel and in automobile jacks.
State Contracting & Engineering
Corp. v. Condotte America, Inc.
346 F.3d 1057
C.A.Fed. (Fla.),2003
• Technology: Highway construction,
integrated column and pile
• Reference: Xanthakos, “Slurry Walls”
[A] factfinder could reasonably conclude that the
inventor's field was the use of integrated
column and pile structures to provide support.
The written descriptions of the two patents
indicate that the inventions are directed to an
integral column and pile for use in building
structures in sandy soil, and there is at least a
question of fact as to whether Xanthakos is
within the field of integral column and pile
support structures, since Xanthakos teaches a
"prefounded column" consisting of a column
that merges with the pile when the concrete of
the pile hardens around the column, and
explains that the prefounded columns are used
to support a superstructure.