The document outlines the patentability requirements under patent law, detailing four key legal requirements: statutory class, utility, and novelty. It discusses critical lawsuits that have shaped patent law, particularly in relation to processes, machines, and software. The complexity of defining 'prior art' and its implications on patent eligibility are also examined.

1. Patentability Requirements
(patent law)
Req.1
Req.2 Req.3
Statutory
Utility Novelty
class
Chen JingFung (Grace)
@csie.ntut.edu.tw
2012/03/22
Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 1413313825

2. Outline
• 4 legal requirements
– Req. 1: Statutory class
• Talk critical lawsuits
• 5 classes: process, machine, manufacture, composition,
new use
– Req. 2: Utility
• turn the whimsical case to patentability
– Req.3: Novelty
• Prior art
Grace@cise.ntut 2

3. Patentability – 4 legal requirements
Law
4 legal req. Criteria
section
Unobiousness 103 Can provide one or more 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 (?)
5 classifications
Statutory class 101 process machine manufacture composition
New use
Patent law 35 USC 101 or 35 USC 102 or 35 USC 103
3
Grace@cise.ntut

4. Requirement #1:
a statutory class[CS] - lawsuits
• Parker v. Flook 437 U.S. 584, 1978 (wiki)
Flook case
• CCPA -> Supreme Court
(1978)
• Use of a math algorithm is non-patentability
Critical lawsuit
• Diamond v. Chakrabarty, 447 U.S. 303,1980 (BIO)
Chakrabarty • Milestone: anything under sun that is made by man
case (1980)
• Diamond v. Diehr, 450 U.S. 175, 1981
• 1st software case – successful case
Diehr case
(1981) • Milestone: can protect the step for using the formula
• Bilski v. Kappos, 130 S.Ct. 3218 @ Supreme Court
• Start with 08/833892 was rejected by examiner
Bilski case • 2010 – re Bilski case (10/400846, 10/108089) was
(2010) also gotten “Abandoned”
Grace@cise.ntut 4

5. Statutory Class [SC] (1) –
process (or method)
• The standard for “process or method” patentability
– Define originally an invention that produced a “useful,
concrete, & tangible”
– After Bilski case (2010/6/28)
• 4 judges said Bilski’s invention too abstract to patent
Non- – even have held that all business methods, even if tied to hardware,
patentable should not be patentable
unless • Affect to determine patent (PTO & CAFC) on subject-matter
hardware is patentability
substantially – Software, diagnostic medical techniques, linear programming, data
involved compression, and manipulation of digital signals
• Make sure your describe & claim it either Pass Machine or
– Is tied to a particular machine or apparatus, or Transformation Test
– Transforms a particular article into a different state or thing
Grace@cise.ntut 5

6. Statutory Class [SC] (2) –
Machines
• Machines are devices or US7651445, 2010,
things used for title: Elliptical trainer
accomplishing a task
– involve some activity or
motion that’s performed
by working parts
– Emphasis on hardware >>
the activity per se.
• Can classify machines into 2
categories: conventional &
software
Grace@cise.ntut 6

7. Statutory Class [SC] (3) –
conventional machines ref: fueleconomy.gov
sewage treatment plants
Actual hardware
and/or as a
process for
manipulating an
electrical signal or
weaving fabrics
Ref: want-car.chinatimes.com
US5815526 (1998), Signal
comprising binary spreading-
code sequences
7
Grace@cise.ntut

8. Statutory Class [SC] (4) –
software machines
• How to make software to
be tied with a machine? – As a machine would be
claimed:
– Most software are claimed
• means [or an apparatus] for
as processes, also be measuring an object to
claimed as machine obtain a set of measurements,
and
– As a process would be • means [or an apparatus] for
claimed: adjusting a milling machine
according to the set of
• measuring an object to
measurements.
obtain a set of
measurements, and
• controlling a milling
machine according to the
set of measurements.
CNC (Computer Numerical Control) machine cutting,
ttp://www.youtube.com/watch?v=u2T2geQoSx8&feature=related Ref: wiki 8
Grace@cise.ntut

9. Statutory Class [SC] (5) –
Manufactures - US6092278
Prior art
US6092278, 2000, Method for pencil cores have multi-size in one pencil
manufacturing a pencil-shaped core
Grace@cise.ntut 9

10. Statutory Class [SC] (6) –
Manufactures - US6092278
showing a die used in
the manufacture of
pencil cores
according to the
present
a top view of the strip
as blanked at three of
the scrap area
blanking stations
showing changing
spacing of blanked
scrap regions
US6092278, 2000, Method for manufacturing a pencil-shaped core
Status: Patent Expired Due to NonPayment of Maintenance Fees Under 37 CFR 1.362
10
Grace@cise.ntut

11. Statutory Class [SC] (7) –
Compositions of Matter
US5246717 (1993) Eggs compatible with
• Compositions of matter cholesterol-reducing diet and method of
producing the same
are items
– as chemical compositions,
conglomerates (rock),
aggregates …
– Can form as Solid, Liquid
or Gas
– Recently,
• genetically altered plants,
microbes, genes, and
nonhuman animals have
been allowed under this
category.
11
Grace@cise.ntut

12. Statutory Class [SC] (8) –
New use of any of the above
• A new-use invention is actually a new and
unobvious process or method for using an
old and known invention
– but the discovery of a new use for old-thing
• For example, “Venetian blind cleaner can cleaner
also be used as a seed planter”
– Venetian blind cleaner (already patented) can
not be patented
• you didn’t invent it!!
– But can get a patent on the specific new use
(seed planting) of the old hardware seed
Grace@cise.ntut 12

13. Requirement #2: Utility (1)
• The usefulness of your invention be relatively
great to “commercial viability” test
– Provided the usefulness is *functional*, not
aesthetic
– Worst case in applying a new chemical
• A use hasn’t been found but its inventor will find one
later
• the inventor can’t state a realistic use, PTO won’t grant
a patent
Is considered useful
– For example,
cup
A novel paper as a Mobile
coating in insulated refrigerator
cup canteen
Pic ref: diytrade.com 13
Grace@cise.ntut

14. Utility (2): software
• Software-based inventions usually satisfy the
utility requirement
– Software has a utilitarian function, even if used to
• create aesthetic (Ex. CG) on an idle monitor or
• To evaluate golf scores or
• Mutual fund assets
– The major problem of software inventions
• may not fall into a statutory class (req. # 1)
14
Grace@cise.ntut

15. Utility (3): non-patentable case
Pic ref: guardian.co.uk
Pic ref: mrsturtle.com
• The invention should be tested in case it falls into “legally not
useful” categories listed
Unsafe New Whimsical Useful only for
Immoral case
Drugs case illegal purpose
Non-operable Nuclear Theoretical Aesthetic
case weapon phenomena purpose
Grace@cise.ntut 15

16. Utility (4): new drugs about
un-safety or safety
• PTO won’t great a patent on any new drug
unless the patent can show
– It’s useful in treating some condition &
– it’s relatively safe for its intended purpose
N
Un-safety
Drug
patent Y
Safety
Inventor can
patent the use of
chili to treat
baldness
Grace@cise.ntut 16

17. Utility (5): create a patentability
from a whimsical case
• Whimsical case • Statutory class(req#1) -
– US3712271 (1973) Toe New use!!
holder (a figure-eight- – US6321753 (2001) Tanning
shaped device) restraint apparatus and
• Hold your big toes methods…
together to prevent • cited US3712271, became a
sunburned useful case
• status: patented case
Brainstorm
Miraculous
Fuzzy logic
US3712271, 1971, Toe holder
17
Grace@cise.ntut

18. Requirement #3: Novelty (1) –
Prior Art
• The novelty requirement of a patent (like
“unobviousness”) is often misunderstand
– Prior art
• Your invention must be pass the “novelty” test on
physical or method-step difference over all prior
developments in the world
– Referred these collection of prior- developments & concepts
• Determine what is prior art is complex!!
• Understand what your invention must “differ from”
– Start from how the law defines “prior art”
Grace@cise.ntut 18

19. Novelty (2):
Prior Art in patent laws
• According to Section 102 of the patent laws,
the term “prior art”
– means generally the state of knowledge existing
or publicly available either
• before the date of your invention or
• > 1 year prior to your earliest patent application date.
Grace@cise.ntut 19

20. Novelty (3): Prior Art -
Date of your invention
• Decide what prior art need to determine the
“date of your invention”
– Under the U.S. system you can usually go back
earlier than your filing date (if you can prove!!)
• the earlier 3 dates (filing, building and testing, or
conception accompanied by diligence)
built and tested your invention in
the U.S. or a country that is a
member of NAFTA or the WTO.
(35 USC 104)
you conceived filed your patent
invention by diligence application
in a NAFTA or WTO (provisional or
country Grace@cise.ntut regular) 20

21. Novelty (4): Prior Art –
Reduction to Practice
• In the US law, the building and testing of an
invention is called a “reduction to practice.”
(2 ways on “reduction to practice”)
– “constructive”: the filing of a patent application, while
not an actual reduction to practice
– “actual”: by producing a physical embodiment of the
invention
• SC-manufacture, provide a prototype or model of the
invention.
• SC-method, perform the method and confirm the results.
• SC-composition of matter, synthesize or otherwise produce
the composition.
Ref: patentlens.net
SC: Statutory Class Grace@cise.ntut
21

22. Summary
• Start from Patentability – 4 legal requirements
– req.1: a statutory class – lawsuits & 5 classes cover
processes, Machines, Manufactures,
Compositions, New use
– req.2: Utility including software, non-patentable
case by drug issue & how to turn back a whimsical
case
– Req.3: Novelty - prior art (Reduction to Practice)
Grace@cise.ntut 22

23. 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 & WM2Patentability
• CNC (Computer Numerical Control) machine cutting,
http://www.youtube.com/watch?v=u2T2geQoSx8&feature=related
• Patentlens: http://www.patentlens.net/
• Blog: http://fungsiong.blogspot.com/
– Introduce hybrid 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
grace@csie.ntut 23