Posts Tagged: "§ 102"

In Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., the Federal Circuit reversed the district court and held that Helsinn’s pre-AIA patent claims, “were subject to an invalidating contract for sale prior to the critical date,” and furthermore, “the AIA did not change the statutory meaning of ‘on sale’ in the circumstances involved here.” The asserted claims of the post-AIA patent were also ready for patenting prior to the critical date… The on-sale bar, before and after the AIA, does not require a finding that the offer or sale disclosed the details or claimed features of the invention, so long as the product embodies those features when sold. An invention is reduced to practice, and ready for patenting, when it is reasonably shown to work for its intended purpose, which for a pharmaceutical product is not contingent upon FDA approval.

Earlier today the United States Court of Appeals for the Federal Circuit issued a major decision interpreting provisions of the America Invents Act (AIA), specifically the AIA on-sale bar provisions. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit panel of Judges Dyk, Mayer and O’Malley determined: “after the AIA, if the existence of the sale is…

The Supreme Court recently issued its decision in Star Athletica v. Varsity Brands, which addressed whether copyright protection can extend to the graphic designs depicted on cheerleading uniforms. The sole inquiry in Star Athletica was the meaning of a provision in the Copyright Act which permits copyright protection for the design of a pictorial, graphic or sculptural work, but only to the extent that the design can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article. Essentially, the question in Star Athletica was whether a copyright could extend to a graphical design that allegedly made a useful product more desirable because it satisfied the aesthetic demands of target purchasers. But will the Supreme Court’s decision in Star Athletica lead to more expansive protection for clothing designs? The result, I fear, is that the decision will serve to raise more questions than it resolved.

Section 102 rejections are very common at the USPTO and you are likely to get one no matter what kind of technologies you work with. Fortunately, they are not terribly difficult to overcome, as even the least successful method of responding to them is still successful over half of the time. If you get a § 102 rejection, then an interview or an interview paired with an RCE is the best way to respond. Generally speaking, an appeal is arguably the worst way to respond, even though their success rate is not the lowest. This is because appeals have a success rate that is only 1.2 percentage points higher than RCEs. Thus, in most cases there is little reason why any applicant should appeal a § 102 rejection rather than choosing an RCE, since doing so will cost significantly more than and take longer to resolve for almost no additional benefit. Thus, in the ordinary case an appeal wouldn’t generally be the most reasonable first choice to pursue. Filing an appeal instead of an RCE should, therefore, require some kind of special factor that would lead the applicant or attorney to view it as having a strategically superior advantage.

Anticipation can arise when the disclosure of a limited number of alternative combinations discloses the one that is claimed. However, a reference does not anticipate because an artisan would immediately envision a missing limitation… In Kennametal, the challenged claim required a ruthenium binding agent and a PVD coating to be used together. The prior art reference disclosed five binding agents (including ruthenium) and three coating techniques (including PVD), and taught that any binding agents could be used with any coatings. Thus, Kennametal held that the reference effectively taught fifteen combinations, one of which anticipated the challenged claim. A limited number of possible combinations effectively disclosed one of them. Kennametal does not hold that a reference can anticipate a claim if a skilled artisan would “at once envisage” the missing limitation. As a result, the Court reversed the Board’s finding of anticipation.

The PTAB held that anticipation can be found even when a prior art reference does not disclose each and every claim element as long as one of skill in the relevant art would “at once envisage” the claimed arrangement, citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). The Federal Circuit explained the PTAB fundamentally misinterpreted and misapplied the Court’s holding in Kennametal… For there to be anticipation each and every element must be present, period. Close is not the same and PTAB judges should know that.

Sections 101 and 112 provide their own separate limitations to the scope of patent protection in ways that are sometimes complimentary and sometimes contradictory… Inventors are motivated to maximize the breadth of their claims. But they may seek to do so by employing imprecise claim language. Both §§ 101 and 112 corral this behavior, although in slightly different ways. Section 101 safeguards against claims that are too abstract or overbroad to be patentable, being concerned with claims that would “wholly pre-empt” any other use of an inventive concept, thereby foreclosing independent innovations or application. Bilski, 561 U.S. at 610 (quotation omitted). Section 112 protects against claims that are not completely and functionally disclosed within the patent specification ensuring that patentees cannot claim more than what they have invented – and shared with the public.

In an IPR decision, the Patent Trial and Appeal Board invalidated several claims from U.S. Patent No. 6,030,384 as anticipated or obvious over Japanese Publication No. H1033551A. The Federal Circuit vacated and remanded. The antedating inquiry under Pre-AIA section102(g) is directed to evidence of diligent activity during the critical period as a whole and does not require justifying every period of unexplained inactivity.

Hands on exercises were part of the program. In reading and understanding a patent application, materials were provided how examiners learn to break down an application in order to prepare to conduct a search. Work sheets and a sample problem of a mechanical device (a tortilla making machine) application with prior art references were provided to the attendees so they could do a disclosure analysis, determine any §112(f) issues, create a claim diagram, create a claim tree and ascertain if there are any other §§112 and/or 101 grounds of rejection. Another exercise was claim mapping using the same sample problem and additional prior art using PTO forms to formulate allowances and rejections. After the exercises were completed, there was discussion of what was learned and how there are many different ways to reach a conclusion.

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section of the Patent Act: § 101 (subject matter), § 102 (novelty), § 103 (non-obviousness), § 112(a) (specification), and§ 112(b) (definiteness). Any application can receive any one of these rejections, but some are more common than others, especially when considering technology center and the type of technology involved. For example, § 101 rejections are very common in TC 3600 due to the presence of the§ 112(a) Alice-heavy e-commerce art units, while fairly simple inventions are more likely to receive § 102 rejections. In addition to prevalence based on technology type, the type of rejection an applicant can receive can also depend upon where their application is in the prosecution process. When it comes to first final rejections, § 103 rejections are the most common.

It is the personal relationships and dynamics between those junior and senior examiners where the final, hidden gate to patentability stands. Between them, the junior examiners perform the heavy lifting of searching the prior art and preparing the official actions, and the more senior examiners carry the burden of signing those official actions and allowing applications to grant… To be effective, patent practitioners can do more than narrowly obsess over a single novel and non-obvious element in the claims… Patent practitioners can provide junior examiners with an “elevator pitch” for allowability. They can arm junior examiners with technically clear and concise arguments that are fast to recount and express.