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January 9, 2009

Obviously Flowing

Tokyo Keiso tried pipe-hitting SMC for infringing 5,485,004, claiming a pipe volume flow meter. Figuring Obzilla would take the "predictable next step", the district court found "the '004 patent obvious as a matter of law." No argument from the CAFC on that. After all, if the prior art isn't teaching away, it's teaching the way. Obzilla knows all the dance steps, that nimble lug. It didn't help that the "patent specification concedes as prior art most of the limitations of claims." Not much flow there.

Tokyo Keiso v. SMC and Chronotek Systems (CAFC 2008-1045, -1112) non-precedential

SMC found two references, a patent (Urmson) and a publication (Lynnworth), "within the same field of endeavor."

According to the court, both references would have fairly suggested the same structure and function as the '004 patent, including slowing down the interfering signal, and neither teaches away from slowing down the signal. The court also reasoned that, because the PTO considered neither Urmson nor Lynnworth during prosecution, the presumption of validity was also much diminished.

One claim went to a special plastic. So what.

Thus, according to the court, the '004 patent's use of the best type of plastic was a predictable next step to the prior art.

Likewise a change in configuration.

The court also found that the '004 patent's use of a straight tube with measuring heads attached to each side, instead of angularly clamped onto the tube as in the Lynnworth article, was a predictable next step, and Lynnworth did not teach away from the claimed invention.

Case law capsule of facts leading to legal ruling -

"The ultimate judgment of obviousness is a legal determination. Where . . . the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute, and the obviousness of the claim is apparent in light of these factors, summary judgment is appropriate." KSR v. Teleflex, 127 S. Ct. 1727, 1745-46 (2007).

Silence is golden when it comes to describing the prior art in a patent application.

"Valid prior art may be created by the admissions of the parties. . . . [A] statement by an applicant during prosecution identifying certain matter not the work of the inventor as 'prior art' is an admission that the matter is prior art." Riverwood Int'l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003) (citations omitted); see also Constant v. Advanced Micro-Devices Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness.").

Lynnworth discloses all of the aspects of claims 1, 2, and 5 that are not admittedly prior art.

Obzilla is one motivated creature.

"When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability." KSR, 127 S. Ct. at 1740.

Affirmed.

Posted by Patent Hawk at January 9, 2009 3:10 PM | Prior Art

Comments

So, Hawk, I'll read the Decision. Meanwhile, ME/EE readers who are ahead of me, do we now have the CAFC saying that "It's obvious whenever PHOSITA (back at the relevant date) could have done it" while the EPO says "It's obvious only when PHOSITA would have done it on that date"?

Posted by: MaxDrei at January 10, 2009 3:06 AM

Its pretty obvious that deciding what a PHOSITA would know, could know, or should know is based on contradictory inputs. I have never seen anyone balance the meaning of Ordinary with the ability to know and understand ALL prior art in the art field and in all fields that may present a similar problem. While the addition of Ordinary common sense is welcome, the balance of Ordinary limitations seems to be a forbidden subject.

Posted by: coulda would shoulda at January 10, 2009 7:36 AM

Regret, but don't understand your thinking Hawk. Both legal novelty and legal obviousness are artificial, because no real person knows the art like the PHOSITA does. Legal certainty on what's patentable requires an "objective" test for obviousness, to match the one we already have for novelty. As we are now seeing in the SCOTUS/CAFC obviousness caselaw in the ME/EE arts, everything's predictable so, with hindsight, everything's "obvious". Except that that's not fair to the inventor, is it? The EPO does have an objective, hindsight-free test for obviousness, called PSA, which it's been refining these past 30 years. EPO folks watch the rest of the world keenly, to see when it will come up with its own dispassionate objective obviousness test. We're still waiting.

Posted by: MaxDrei at January 10, 2009 9:53 AM

The point is not about PHOSITA being artificial or real. Obviously PHOSITA is an artificial construct.

The point is contrasting the addition that this artificial construct would have some ordinary level of common sense (not a bad thing), but ignoring that NO ordinary person (in ANY art) would have an all-encompasing knowledge of prior art, not only in the field of the art in question, but in any field that may face a similar problem. There simply are not people of ordinary skill that have that capability, and yet this capability is not questioned for the Person Having Ordinary Skill In The Art.

Posted by: could woulda shoulda at January 10, 2009 11:08 AM

Thanks Hawk for that. And exactly there lies the conundrum that I'm on about. Any printed document can be the novelty destroyer, no matter how obscure and unknown it is, to every real life American engineer who really is practising in the technical field in question. We revoke under 102, or Art 54 EPC, on the basis of an obscure document yet, when it comes to 103, you want to exclude such docs from the analysis, because they are not well-known enough? Why not then 102 as well? In that case, how obscure shall a printed publication be, before it is disqualified as a novelty attack? You think I'm wrong on obviousness. Now please explain how I'm also wrong on novelty. I'm here to learn.

Posted by: MaxDrei at January 10, 2009 3:15 PM

"Meanwhile, ME/EE readers who are ahead of me, do we now have the CAFC saying that "It's obvious whenever PHOSITA (back at the relevant date) could have done it" while the EPO says "It's obvious only when PHOSITA would have done it on that date"?"

I'll bite. Max, where on earth do you see the word "could" being used by the CAFC? Even Examiners know 35 USC 103 uses a "would have been obvious" standard.

Posted by: NIPRA anonymous at January 10, 2009 4:06 PM

Underlying the EPO's "would" is the thought that not everything that's predictable (what the skilled person "could" have worked out) is obvious. For the EPO, little that is predictable (and the whole of ME/EE is predictable) is obvious. What is obvious is when the prior art contains the TSM to solve the EPO's "objective technical problem". The elegance of EPO-PSA lies in defining that OTP, without recourse to hindsight. Defining that problem involves imputing to the PHOSITA a specific search objective, but that in turn is derived from what the inventor chooses to write about his/her invention, before filing the app.

My worry with KSR is that it lumps "obvious" with "predictable". I think that's tantamount to "could", and wrong.

Posted by: MaxDrei at January 11, 2009 2:51 AM

MaxDrei,

Well said - and I agree (and I am not Patent Hawk).

Would you consider the expansive use of "obvious to try" to be in the same category?

Posted by: coulda woulda shoulda at January 11, 2009 7:00 AM

Well, Coulda, it is well-known by those who follow the English caselaw that "obvious to try" is a siren song that leads astray many many otherwise sensible patent lawyers. Like the lump hammer it has its place in the toolbox but, like the lump hammer, it is usually far too undiscriminating and crude to do the job properly. Others, more learned than I, can tell you the name of the current leading English case. It's only a few months' old. If memory serves, it's Jacob in the Court of Appeal, pointing out the banal truth that, in chemistry, an awful lot of things are of course "obvious to try" but that it's far from obvious that any one of these multitudinous possibilities will turn out to be the solution to the problem.

Posted by: MaxDrei at January 11, 2009 12:05 PM

"My worry with KSR is that it lumps "obvious" with "predictable". I think that's tantamount to "could", and wrong."

Max, you are correct. That is the current state of the obviousness analysis in the U.S.

Posted by: JD at January 12, 2009 4:53 AM

The court said a "predictable next step" (meaning an improvement in the course of development that was predictable from the teachings of the prior art) was not patentable.

If the course of future development was predictable from the prior art, it necessarily would have been obvious.

Prior art: teach that an effective solvent for copper integrated circuit fabrication is fluorine, chlorine or other halogen.

Predictable next step: try bromine.

[There most certainly are secondary considerations for obviousness determination that can carry the day, but to say the Examiner has not made a prima facie case of obviousness by saying "try bromine" fully eviscerates the teachings of the prior art, and provides patent protection for "predictable next steps" without (necessarily) promoting progress....]

Posted by: NIPRA anonymous at January 12, 2009 7:27 AM

"Prior art: teach that an effective solvent for copper integrated circuit fabrication is fluorine, chlorine or other halogen.

Predictable next step: try bromine."

Bromine is a halogen, and thus the prior art would anticipate any claim to using bromine as an effective solvent for Cu IC fabrication.

There would be no obviousness analysis required.
Unless the applicant could establish some unexpected results.

I don't think Max was referring to the case of whether a prior art disclosure of a genus anticipates, or renders obvious, every claim to a particular species.

My problem with a lot of this "predictable" rationale I'm seeing from, for example BPAI, is that it is really nothing more than hindsight disguised as fact finding, or ex post facto "reasoning" that just so happens to arrive at the claimed invention. As if by magic.

Hindsight is hindsight. You know it when you see it.

Posted by: JD at January 12, 2009 7:35 AM

"Bromine is a halogen, and thus the prior art would anticipate any claim to using bromine as an effective solvent for Cu IC fabrication."

No it would not necessarily. (Though I grant you in some cases it may.) :-)

"It is well established that the disclosure of a genus in the prior art is not necessarily a disclosure of every species that is a member of that genus." (Corning GW v. Sumitomo)

I was talking obviousness, not anticipation. And you are correct - it's easy to say something is a "predictable next step" when it's not really. But that doesn't change the fact that if a PHOSITA could do something and it was in fact a "predictable next step", it will be virtually impossible to show it was not obvious.

Posted by: NIPRA anonymous at January 12, 2009 7:48 AM

"But that doesn't change the fact that if a PHOSITA could do something and it was in fact a 'predictable next step', it will be virtually impossible to show it was not obvious."

I think that goes to the heart of Max's argument/question. What is the PTO required to show? That one of ordinary skill could do something, or that one of ordinary skill would do something.

I think one of the great missed opportunities from KSR (amongst many) was SCOTUS never addressed the provision of 103(a) that states that patentability shall not be negatived by the manner in which the invention was made.

What does that mean?

It would have been better if SCOTUS had actually read 103(a) and actually attempted to assign some meaning to its provisions, rather than discussing racoons and bicycles, or whatever the heck tangent they went off on.

Posted by: JD at January 12, 2009 8:22 AM

Nip, what's all this stuff about "show it was not obvious". Nobody has that burden of proving a negative, do they? I thought it was first the positive burden on the PTO and, second, any petitioner for revocation, to show that the claim contains within its ambit something that is obvious. Or is the USA now in a brave new world of "No patent until you prove it ain't obvious"?

Posted by: MaxDrei at January 12, 2009 8:25 AM

"What is the PTO required to show? That one of ordinary skill could do something, or that one of ordinary skill would do something."

That is was a predictable next step.

"I think one of the great missed opportunities from KSR (amongst many) was SCOTUS never addressed the provision of 103(a) that states that patentability shall not be negatived by the manner in which the invention was made.

What does that mean?"

That provision was included in the original 103 to overrule Cuno Engineering Corp.

http://en.wikipedia.org/wiki/Flash_of_genius

Only once did I see an examiner use the Cuno test to reject a pro se applicant (in the 80s or early 90s). He was subsequently removed from the case.

Posted by: NIPRA anonymous at January 12, 2009 8:31 AM

"Nip, what's all this stuff about "show it was not obvious". Nobody has that burden of proving a negative, do they? I thought it was first the positive burden on the PTO and, second, any petitioner for revocation, to show that the claim contains within its ambit something that is obvious. Or is the USA now in a brave new world of "No patent until you prove it ain't obvious"?"

Max, an examiner need only make a prima facie case of obviousness. The burden then shifts to the applicant to prove the invention was not obvious e.g., through "secondary considerations".

See:

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2142.htm

See also:

"V. CONSIDERATION OF APPLICANT'S REBUTTAL EVIDENCE

Office personnel should consider all rebuttal evidence that is timely presented by the applicants when reevaluating any obviousness determination. Rebuttal evidence may include evidence of "secondary considerations," such as "commercial success, long felt but unsolved needs, [and] failure of others"(Graham v. John Deere Co., 383 U.S. at 17, 148 USPQ at 467), and may also include evidence of unexpected results. As set forth above, Office personnel must articulate findings of fact that support the rationale relied upon in an obviousness rejection. As a result, applicants are likely to submit evidence to rebut the fact finding made by Office personnel. For example, in the case of a claim to a combination, applicants may submit evidence or argument to demonstrate that:

(A) one of ordinary skill in the art could not have combined the claimed elements by known methods (e.g., due to technological difficulties);

(B) the elements in combination do not merely perform the function that each element performs separately; or

(C) he results of the claimed combination were unexpected.

Once the applicant has presented rebuttal evidence, Office personnel should reconsider any initial obviousness determination in view of the entire record. See e.g., In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); In re Eli Lilly & Co., 90 F.2d 943, 945, 14 USPQ2d 1741, 1743 (Fed. Cir. 1990). All the rejections of record and proposed rejections and their bases should be reviewed to confirm their continued viability. The Office action should clearly communicate the Office's findings and conclusions, articulating how the conclusions are supported by the findings. The procedures set forth in MPEP § 706.07(a) are to be followed in determining whether an action may be made final.

See MPEP § 2145 concerning consideration of applicant's rebuttal evidence. See also MPEP § 716 to § 716.10 regarding affidavits or declarations filed under 37 CFR 1.132 for purposes of traversing grounds of rejection."

from http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm

Posted by: NIPRA anonymous at January 12, 2009 8:39 AM

From that Wiki entry:

The doctrine was formalized in Cuno Engineering Corp. v. Automatic Devices Corp. (314 U.S. 84 (1941)) which held that the inventive act had to come into the mind of an inventor in a "flash of genius" and not as a result of tinkering. "The new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain." (Id. at 91). This test, which lasted little more than a decade, was most likely an appealing and easy standard for judges and unsophisticated jurors to apply to any given patent dispute when the technology being disputed was beyond their non-scientific acumen.

The flash of genius test was eventually rejected by the 1952 patent statute's Section 103 standard of non-obviousness: "Patentability shall not be negatived by the manner in which the invention was made." Many decades later, the United States Court of Appeals for the Federal Circuit stated that this portion of Section 103 was enacted expressly to overrule the flash of genius test from Cuno (Ryko Manufacturing v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991)).


So if 103(a)'s "patentability shall not be negatived..." provision overruled the flash of genius standard, then doesn't it follow that an invention that IS the "result of tinkering" may be non-obvious, and therefore patentable?

"That is was a predictable next step."

I think your answer answers my question, which was, "Is the PTO required to show that one of ordinary skill could have, or is the PTO required to show that one of ordinary skill would have?".

I think it's much easier to show that one of ordinary skill could have, because the PTO can, and will, rely on hindsight.

I think it's much harder to show that one of ordinary skill would have, which would require the PTO to lay out enough evidence to establish by at least a preponderance that what applicant invented was the inevitable result of the knowledge of those of skill in the art when addressing a known problem, or at least a problem reasonably similar to what was known, and solved, previously by others of skill.

In the latter case, I would suggest that Europe's PSA is a more reliable, and fair, approach than the current, "Well, it could have been predictable..." that I'm seeing from our examiners, APJ's, and judges.

Of course, if I'm speaking outta my hat, I'm sure Max will correct me.


Posted by: JD at January 12, 2009 8:43 AM

"So if 103(a)'s "patentability shall not be negatived..." provision overruled the flash of genius standard, then doesn't it follow that an invention that IS the "result of tinkering" may be non-obvious, and therefore patentable?"

Absolutely.

By the way, the PTO has to show the invention "would have been obvious" per 103. The "predictable next step" is apparently one way to do that (not the only way), per the court.

"I think it's much easier to show that one of ordinary skill could have, because the PTO can, and will, rely on hindsight."

Agreed. As a young examiner I once (mistakenly) rejected an application saying blah, blah, blah one skilled in the art "could have" made the invention. Applicant's representative came back with the response (paraphrase):

"It is not disputed that one skilled in the art could have made the invention. Applicant did!"

Nuked my argument.

I never forgot that, and was always careful to use "would" after that.

The question can't be "could have", for obvious reasons.

P.S. I like the PSA test too.

Posted by: NIPRA anonymous at January 12, 2009 9:06 AM

Nip, it's the "prima facie" bit that worries me (and JD, I think) because in a mech/physics case, once that's up and running, rebuttal is more or less unattainable (except by resort to Graham factors). We are saying that, given hindsight, it is easy to announce a "prima facie case" so, to be fair to ME/EE inventors, you need to impose on the PTO a rationale that squeezes out hindsight and allows the prosecuting attorney to cry foul, when hindsight creeps in to the PTO analysis. That's the beauty of EPO-PSA. Outside the USA, Graham factors are viewed with great scepticism (rightly in my view). Inside the USA, Graham factors are fudge factors for the court, and greatly cherished by lawyers looking to bill another 100X hours of time.

Posted by: MaxDrei at January 12, 2009 9:12 AM

Oh, Gosh, Max, did I make your head bigger by saying I like the PSA test. Mea culpa! I recant - I absolutely HATE the PSA test!!

[Watch that door frame, Max, you'll bump your head again!]

Posted by: NIPRA anonymous at January 12, 2009 9:21 AM

Nip I don't mind whether you like or dislike PSA. What distresses me is when other readers criticise it, or (even worse) dismiss it as "too simple", even before they know how it works. Don't feel guilty, please. I would h8te that. I assure you, you didn't make my head any bigger than it is already.

Posted by: MaxDrei at January 12, 2009 9:45 AM

I agree with Max. When all that is required to establish a prima facie case is "could have" then you make rebutting that essentially proving a negative.

Anybody given applicants disclosure "could have" done what applicant did.

And if that is the standard, which I would argue it is now, and always was, at least in the PTO first Office Actions I've been receiving for 9+ years, secondary considerations are essential to permit applicants to rebut.

If the standard is "would have" (which I think it should be) then I still think secondary considerations are less important, but still should be available.

In my own experience, I only have to resort to secondary considerations in about 1 in 10 rejections under 103(a). Maybe even less, maybe 1 in 20. Failure of the reference(s) to disclose all the elements and no reason to combine usually are sufficient to traverse.

Posted by: JD at January 12, 2009 12:34 PM

Now I'm confused: "no reason to combine" is enough to defeat a PTO obviousness objection? Either 1)there's no difference from "no TSM" or 2) "reason" has a special meaning. One "reason" to combine is the ubiquitous EPO "reason" namely just to get to a mere alternative way of accomplishing that mundane task which is accomplished by that which is enabled (machine, process, product) by the disclosure of the primary reference.

Posted by: MaxDrei at January 12, 2009 1:57 PM

"no reason to combine" is enough to defeat a PTO obviousness objection?

Yes. Under KSR, the references must contain interrelated teachings that would provide one of ordinary skill in the art with an apparent reason to combine.

If there are no interrelated teachings, there's no reason to combine.

This is a fairly easy argument to make, particularly when the references being applied are full of "an/the objective of the invention is..."

Even the PTO's guidelines/directives to examiners state that the examiner has to provide a reason for combining the references. Unstated in those guidelines, but a requirement nonethless, is that the reason(s) has to be reasonable, i.e. it has to pass the straight face test.

You'd be surprised at how often 1) I get rejections that don't state any reason why one of ordinary skill in the art would modify/combine and/or 2) the reason that is provided provokes gales of laughter from me and/or the client.

Posted by: JD at January 12, 2009 2:29 PM

Ok. Thanks JD. Sadly, the older I get, the more seldom an Office Action surprises me. But I'm still curious. Two questions:

1) how stiff is the "interrelated" test? Are we "interrelated" when both the art docs in view are in the same technical field and have the same technical background, their respective authors sharing much the same "mental furniture" and both respectively striving to contribute their special something to technical progress in that shared field?

2) Is the ubiquitous EPO reason "to create an alternative that works just as well" one that creates gales of laughter in your circles?

Posted by: MaxDrei at January 12, 2009 11:54 PM

1) It's not that stiff. But like I said, the arguments write themselves when the references are loaded with "objectives." I have one case on appeal where the primary reference A mentions twelve objectives of the invention and secondary reference B mentions six objectives, and there is no simply no way a reasonable argument can be made that the objectives and/or the teachings of the references are intterelated. None.

2) No. The rationale or reasoning of "substituting alternatives/equivalents" has been used in the U.S. for many years. That doesn't end the analysis though. There has to be substantial evidence, i.e. evidence from somewhere other than applicant's disclosure, that the alternative/equivalent is recognized by those of ordinary skill in the art as alternative/equivalent. You'd be surprised at how many OA's I get where the examniner "reasons" that "The limitation X is equivalent to limitation Y as evidenced by applicant's disclosure/claiming them together in one application." That does produces gales of laughter.

Posted by: JD at January 13, 2009 7:30 AM

Thanks JD. Sometimes I have a disclosure of X in embodiments 1, 2, 3,....n, and a claim to "X". EPO Exr finds an embodiment of X in the art and I am asked to respond to the EPO Exr's objection with the argument that X3 is novel and inventive. On seeing the claim to X3, Exr says "When you filed your app, you taught that the performance of X3 idoes not differ (in substance) from that of all the other forms of X. But now you say (for the first time) that its performance is different and better than all the other forms of X. That is a discovery (selection) you had not made when you originally filed, so I'm not giving you a selection patent backdated to when you originally filed." In Europe, that's no laughing matter. Am I missing something?

Posted by: MaxDrei at January 13, 2009 8:58 AM

"Am I missing something?"

I don't think so. In Europe, I'm sure what you describe would be the result.

It would not necessarily be the result in the U.S. In the U.S., there's no requirement that you distinguish between your embodiments in the original application. The evidence and/or arguments may come later.

Posted by: JD at January 13, 2009 11:43 AM

My point is that there was no reason to distinguish the embodiments, back when the app was written. The inventor DIDN'T KNOW THEN that one worked better than all the rest. Yet, years later, in prosecution, Applicant gets a 20 year monopoly on the basis that ...surprisingly !!!!....one works better than all the rest. My point is: what about the independent inventor, the other side of the world, who found out that that one works better than all the rest. And filed on it. On a date somewhere between the first inventor's....filing date...and....the date he suddenly discovers...in overcoming the USPTO action....that this one works better than the others....that he thought on his filing date....were all the same. Should not the second inventor get the monopoly rights, rather than the first inventor? Will she?

That's my point.

Posted by: MaxDrei at January 13, 2009 2:22 PM

"Bromine is a halogen, and thus the prior art would anticipate any claim to using bromine as an effective solvent for Cu IC fabrication."

W T F, is that JD stating that a genus now anticipates the species? Give me a break

Posted by: 6000 at January 13, 2009 7:14 PM

However, a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because "one skilled in [the] art would... envisage each member" of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (emphasis in original).

I would submit to you that halogen is a sufficiently small genus to warrant an anticipation rejection in NIPRA's hypothetical.

Max,

The following is all I can think of in response to your question. It may not satisfy you, but it is the state of our law.

"The totality of the record must be considered when determining whether a claimed invention would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995) (Although the purported advantage of placement of a selective catalytic reduction catalyst in the bag retainer of an apparatus for controlling emissions was not disclosed in the specification, evidence and arguments rebutting the conclusion that such placement was a matter of "design choice" should have been considered as part of the totality of the record. "We have found no cases supporting the position that a patent applicant's evidence or arguments traversing a § 103 rejection must be contained within the specification. There is no logical support for such a proposition as well, given that obviousness is determined by the totality of the record including, in some instances most significantly, the evidence and arguments proffered during the give-and-take of ex parte patent prosecution." 66 F.3d at 299, 36 USPQ2d at 1095.). See also In re Zenitz, 333 F.2d 924, 928, 142 USPQ 158, 161 (CCPA 1964) (evidence that claimed compound minimized side effects of hypotensive activity must be considered because this undisclosed property would inherently flow from disclosed use as tranquilizer); Ex parte Sasajima, 212 USPQ 103, 104 - 05 (Bd. App. 1981) (evidence relating to initially undisclosed relative toxicity of claimed pharmaceutical compound must be considered).

The specification need not disclose proportions or values as critical for applicants to present evidence showing the proportions or values to be critical. In re Saunders, 444 F.2d 599, 607, 170 USPQ 213, 220 (CCPA 1971)."

Posted by: JD at January 14, 2009 8:58 AM

"I would submit to you that halogen is a sufficiently small genus to warrant an anticipation rejection in NIPRA's hypothetical."

It may, and (as a prosecutor), I would respond that the reference is not enabling as for bromine, since bromine is a liquid at room temperature, and the reference only taught how to use gaseous (fluorine, chlorine) solvents.

For the species to be anticipated, the reference must be enabling as to that species. [The examiner would best use both 102 and 103 rejections in this case.]

"Under Sumitomo's theory, a claim to a genus would inherently disclose all species. We find Sumitomo's argument wholly meritless whether considered under section 102(b) or under 35 U.S.C. Sec. 103 (1982) to which it makes a passing reference. The Japanese application is a reference only for that which it teaches."

[I am not disagreeing with you, JD... the anticipation question could go either way at the CAFC depending on the panel and where the justices wanted to end up ("facts of the case") - it was not why I framed the hypothetical - I should have perhaps said, "a halogen such as gaseous chlorine or fluorine".]

Posted by: NIPRA anonymous at January 14, 2009 9:38 AM

No sweat. I'm not a chemical practitioner. All I know is that if you draft a mechanical claim and recite "a fastener" and you disclose 4 or 5 embodiments of fasteners in your spec, and the examiner finds a reference that is spot on, with the exception that the fastener is not one of the 4 or 5 embodiments you disclosed, you're getting a 102 rejection. On the dependent claims to the particulars of the fastener, you're probably getting 103's. Happens all the time.

Posted by: JD at January 14, 2009 9:51 AM

"All I know is that if you draft a mechanical claim and recite "a fastener" and you disclose 4 or 5 embodiments of fasteners in your spec, and the examiner finds a reference that is spot on, with the exception that the fastener is not one of the 4 or 5 embodiments you disclosed, you're getting a 102 rejection."

And rightfully so, since (unless I misunderstand the hypo) he found your claimed "fastener."

Posted by: NIPRA anonymous at January 14, 2009 10:27 AM

JD, not so different here in Europe. If the "problem" solved by the claim is "derivable" from the original filing, you can adduce later all the evidence you need to get home. There is a nice Paper on the point, delivered by Chris Mercer of London patent firm C&R to an AIPLA meeting (Spring Meeting, I think it was), downloadable from the AIPLA website. The subject's also well covered in the (pleasingly compact) Caselaw Digest, available economically from the EPO.

Posted by: MaxDrei at January 14, 2009 10:54 AM

NIPRA,

See BPAI's decision in Ex parte Fu (Appeal No. 2008-0601, U.S. Application 10/320,809) (March 31, 2008) for a discussion of genus-species and obvious to try.

JD

Posted by: JD at January 14, 2009 1:49 PM

Thanks JD. I see no problem with Ex parte Fu (but then again I also saw no problem the Tokyo Keiso decision).

From Ex parte Fu:

"We expressly reject the notion that a claim reciting a species is per se patentable when the prior art discloses a genus encompassing a broad but finite number of known options which include the claimed species. We hold that such a per se approach would be contrary to the clear command of our reviewing court.2 That is not to say, however, that an applicant would never be entitled to a patent in a situation as here. For example, KSR and Graham, as well as a myriad of precedents of our reviewing court, teach that secondary considerations such as unexpected results may confer patentability. Also, for example, patentability may be shown if the prior art teaches away from the species within the genus. But here, Appellants did not rely on any such persuasive evidence in support of nonobviousness."

Posted by: NIPRA anonymous at January 14, 2009 4:56 PM