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Novelty to Nonobviousness


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Novelty defining for The law(Section 102) recognizes 3 types of novelty + case studies
Requirement #4: Unobviousness
Patent law: 35 USC 103
35 USC 103 explanations (obviousness)
History, guidelines, approaches: 1966->2007->2010
Determine the patentability flowchart

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Novelty to Nonobviousness

  1. 1. Patentability - Novelty & Unobviousness criteria Req.4 nonobviousness Req.3 Novelty the whole process for patent application Chen JingFung (Grace) 2012/04/26Chapter 5, “Patent It Yourself: Your Step-by-Step Guide” 15th, 2011, ISBN: 14133138252010 KSR Guidelines Update , here
  2. 2. Outline• The law(Section 102) recognizes 3 types of novelty + case studies• Requirement #4: Unobviousness – Patent law: 35 USC 103 – 35 USC 103 explanations (obviousness) • History, guidelines, approaches: 1966->2007->2010• Determine the patentability flowchart & cise.ntut 2
  3. 3. Patentability – 4 legal requirements 4 legal Law Criteriarequirement section Can provide new & unexpected results?Unobiousness 103 Can make of innovation in the specific technology? new physical feature?Novelty 102 new combination of separate old feature? new use of an old feature?Utility 101 Can be regarded as a useful one? 5 classificationsStatutory process machine manufacture compositio 101class n New use Patent law 35 USC 101 or 35 USC 102 or 35 USC 103 &
  4. 4. Requirement #3: Novelty – the law criteria• The law recognizes 3 types of novelty (Section 102) – (1) Physical (hardware or method), – (2) New combination & – (3) New use & cise.ntut 4
  5. 5. Novelty – the law criteria “Physical”• A physical feature must be a hardware (including operational) difference as – a part with shape, material, size, arrangement if the component …• Discover a critical condition of a prior art range A mordant work on dyeing states Original New discovery: it temperature range: can work (5 times): 100 – 150 oC 127 – 130 oC the law still considers this range novel & cise.ntut 5
  6. 6. Novelty – the law criteria “Physical” -2• Apply a mordant to improve the dyeing process US5494491, 1996, Indigo dye process, An improved nonpolluting method of dyeing fibers/fabric includesHow it work? pre-treating the fibers with a mordant solution, preferably a natural nonpolluting mordant solution Fig ref:• Other applications: Natural Dye NT$180 NT$160 NT$800 The method comprising, (a) placing fabric.. (b) displacing oxygen.. (c) introducing… Ref:; TW indigoblue dye (d) oxidizing … … 6 & cise.ntut
  7. 7. Novelty: “New combinations” - bicycle history (1818-1888)1818, Baron (German): wood frame,wheels … , pushed by using feet1839, Kirkpatrick (Scottish): added crankspushed by hand to drive the rear wheel1863, Lallement (French): changed frameto steel and put pedals on front wheel1885, Starley (English): added chain driveto rear wheel1888, Dunlop (Scottish): changed tires topneumatic Ref: 7 & cise.ntut
  8. 8. Novelty: 2 examples for “New combinations”• Combine old components Ref: Combine 2 old concepts = (new) a frame is made of a carbon-fiber alloy novel under section 102 2011 – Tattoo includes Steel, 1870 – bicycle frame Aluminum, Titanium, alloys,.. Carbon fiber• New arrangement front wheel -> rear wheel Torque converter is placed after the gears (novelty!!) Ref: 8 & cise.ntut
  9. 9. Novelty – “New combinations” application• The advantage of BMW M135i using Carbon-fiber – Light weight = low oil cost (Utility!!) German specialist “Wheelsandmore” two piece wheels combine carbon- fiber rims with ultra light alloy centers and titanium screws (~ 40% weight savings compared to a stainless steel screw). & cise.ntut 9
  10. 10. Novelty – “New combinations” key point• Henri Poincare’ : – “Invention consists • in avoiding the constructing of useless combinations and • In constructing the useful combinations which are in the infinite minority. – To invent is to discern, to choose.” & cise.ntut 10
  11. 11. Novelty – the law criteria “New use”• Section C5 define to satisfy the novelty requirement (newness!!) – invent a new use for old item of hardware/old process Dorie invents a new Copper smelter invented by vegetable cooker Jaschik (1830) Will be considered novel, since it’s for Use same a different use method – your invention involves novel physical hardware • Technically it can’t be a new-use invention – Generally speaking • an invention is unobvious == it must be novel!! & cise.ntut 11
  12. 12. Novelty – the law criteria “New use” vs. “unobvious”• The law makes the determination in two-step process (Sections 102 & 103) – First, what novel features (§ 102) the invention has over the closest prior-art reference(s). • Novelty can be a new physical (hardware) feature, a new combination or rearrangement of two separate old features, or a new use of an old feature – Second, determine if the novelty produces any new and unexpected results or otherwise indicates unobviousness (§ 103) & cise.ntut 12
  13. 13. Requirement #4: Unobviousness (1)• Misconception – Your invention is different from the prior art you’re entitled to get a patent on it ??• Fact – Your invention should difference over prior art is considered “unobvious” by PTO or the courts 35 USC 103 Conditions for patentability; non-obvious subject matter – The differences over prior art should not use the ordinary (common) skill Section 103 – Patentability shall • not be negatived manner All patent laws 13 & cise.ntut
  14. 14. Requirement #4: Unobviousness (2) • Unobviousness means? – Foreign countries (including Taiwan) require “an inventive step” – the invention products “unusual & surprising results” – “a synergistic effect” • The whole > ∑ its parts (Ex. 1 + 1 > 2 )TV 1.0 broadcast TV TV 2.0 Connected TV TV 3.0 Smart TV• One-way receiver • TV link to Internet Video • TV links to Service & devices VHS Broadcasting TV via Internet Intelligent TV Watching Catching, Surfing, Playing Sharing, Social Interlink 14 & cise.ntut
  15. 15. Unobviousness – related law 35 USC 103• 35 USC 103 Conditions for patentability; non- obvious 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 btw 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 matter in which the invention was made 15 & cise.ntut
  16. 16. Unobviousness: unobvious to Whom?• PHOSIA: Person Having Ordinary Skill In The Art• Section 103 considers “PHOSIA to subject matter pertains” to measure btw – in the field of the invention & – “Ordinary skills” or “all prior art in the field” Ordinary skills invention (prior art) 16 & cise.ntut
  17. 17. The relationships with 2010 KSR guidelines update 35USC103 explanations MPEP §2141& §2143, Replacing (obviousness) a TSM test to provide a more complete view of the state of the law of obviousness MPEP §2144, support a citing Fed. Cir. 2008 determination of obviousness based upon earlier legal Determination of precedent as a source of obviousness is depended supporting on the facts of each case e.g. “structural similarity” in art 2007 KSR guidelines analysis. See MPEP §2144.09 MPEP §2141 (8th ed. MPEP §2143 state the explicit 2001) [Rev. 6, sep. 2007] analysis for a rejection Noted that teaching- suggestion-motivation (TSM) test was but one possible approach updating383 U.S. 1, 1966MPEP §2141Remain the foundation to Manual of Patent Examining Procedure (MPEP)determine “obviousness” 17 & cise.ntut
  18. 18. Unobviousness: the examine law 383 U.S. 1 (1966)• U.S. Supreme Court decreed in the case of Graham v. John Deere, 383 U.S. 1, 1966; MPEP 2141, that Section 103 is to be interpreted by those steps: 1. Determine the scope and content of the prior art. 2. Determine the novelty of the invention. 3. Determine the level of skill of artisans in the pertinent art. 4. Against this background, determine the obviousness or unobviousness of the inventive subject matter. 5. Also consider secondary and objective factors such as commercial success, long-felt but unsolved need, and failure of others. 18 & cise.ntut
  19. 19. Unobviousness: 2007 KSR Guidelines for obvious• 2007 KSR Guidelines noted TSM test & identified 6 other factors as examples of reasonable lines A. Combining prior art elements according to known methods to yield predictable results; B. simple substitution of one known element for another to obtain predictable results; C. use of a known technique to improve similar devices, methods, or products in the same way; D. applying a known technique to a known device, method, or product ready for improvement to yield predictable results; E. “obvious to try” - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; & F. known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. – Any rationale employed must provide a link btw the factual findings and the legal conclusion of obviousness 19 & cise.ntut
  20. 20. Unobviousness: 2010 KSR guidelines update (1)• The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. – Exemplary rationales that may support a conclusion of obviousness include: A. ~ F. are as same as 2007 KSR guidelines G. Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. • See MPEP § 2143 for a discussion of the rationales listed above along with examples illustrating how the cited rationales may be used to support a finding of obviousness. • See also MPEP § 2144 - § 2144.09 for additional guidance regarding support for obviousness determinations. Ref: MPEP § 2141 @, 8th ed.,rev.8 , Jul 2010 20 & cise.ntut
  21. 21. Unobviousness: 2010 KSR guidelines update (2)• This 2010 KSR Guidelines Update provides a ‘‘teaching point’’ for each discussed case (2007- 2010) – Teaching point can quickly determine related cases – Presented >1 line of reasoning that can properly be applied to a particular factual scenarios e.g. the overlapping cases … • Combining Prior Art Elements: 6 cases • Substituting One Known Element for Another: 7 cases • The Obvious To Try Rationale: 7 cases – Other 4 cases offer “consideration of evidence” & cise.ntut 21
  22. 22. Unobviousness:2010 KSR Guidelines Update-Combining Prior Art Elements(1) case yr Teaching point obvious caseIn re Omeprazole Fed. A general method could apply to make the claimed productPatent Litigation, Cir. within the level of skill(the ordinary artisan), the claim may536 F.3d 1361 2008 nevertheless be nonobvious if the problem which had suggested use of method had been previously unknownSundance, Inc. v. Fed. A claimed invention is likely to be obvious if it is a combinationDeMonte Cir. of known prior art elements that would reasonably have beenFabricating Ltd., 2008 expected to maintain their respective properties or functions550 F.3d 1356 after they have been combined.Ecolab, Inc. v. Fed. A combination of known elements would have been primaFMC Corp., 569 Cir. facie obvious if an ordinarily skilled artisan would haveF.3d 1335 2009 recognized an apparent reason to combine those elements and would have known how to do so. Non-obvious caseCrocs, Inc. v. U.S. Fed. A claimed combination of prior art elements may beInt’l Trade Cir. nonobvious where the prior art teaches away from theComm’n., 598 2010 claimed combination and the combination yields more thanF.3d 1294 predictable results. 22 & cise.ntut
  23. 23. Unobviousness:2010 KSR GuidelinesUpdate-Combining Prior Art Elements(2) case yr Teaching point obvious caseWyers v. Master Fed. The scope of analogous art is to be construed broadlyLock Co., No. Cir. and includes references that are reasonably pertinent to2009–1412, — July 22, the problem that the inventor was trying to solve.F.3d—, 2010 WL 2010 Common sense may be used to support a legal2901839 conclusion of obviousness so long as it is explained with sufficient reasoning. Non-obvious caseDePuy Spine, Inc. Fed. Predictability as discussed in KSR encompasses thev. Medtronic Cir. expectation that prior art elements are capable of beingSofamor Danek, 2009 combined, as well as the expectation that theInc., 567 F.3d combination would have worked for its intended purpose.1314 An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. 23 & cise.ntut
  24. 24. Unobviousness:2010 KSR Guidelines Update-Substituting One Known Element for Another(1) case yr Teaching point In re ICON Fed. When determining whether a reference in a different fieldHow to use reference Health & Fitness, Cir. of endeavor may be used to support a case of obviousness Inc., 496 F.3d 2007 (i.e., is analogous), it is necessary to consider the problem 1374 to be solved. Agrizap, Inc. v. Fed. Analogous art is not limited to references in the field of Woodstream Cir. endeavor of the invention, but also includes references Corp., 520 F.3d 2008 that would have been recognized by those of ordinary 1337 skill in the art as useful for applicant’s purpose. Muniauction, Fed. Because Internet and Web browser technologies had Inc. v. Thomson Cir. become commonplace for communicating and displaying Corp., 532 F.3d 2008 information, it would have been obvious ... 1318 Example for obviousness & cise.ntut 24
  25. 25. Unobviousness:2010 KSR Guidelines Update-Substituting One Known Element for Another(2) case yr Teaching point Aventis Fed. A chemical compound would have been obvious over a Pharma Cir. mixture containing that compound as well as other Deutschland v. 2007 compounds where it was known or the skilled artisan had Lupin, Ltd., 499 reason to … claimed compound, and separating the F.3d 1293 claimed compound from the mixture was routine in the art. Eisai Co. Ltd. v. Fed. A claimed compound would not have been obvious where Dr. Reddy’s Cir. there was no reason to modify the closest prior art lead Labs., Ltd., 533 2008 compound to obtain the claimed compound … but prior art F.3d 1353 had been mention … obvious case Non-obvious case Any known compound may serve as a lead compound when there is some reason for starting with that lead compound and modifying it to obtain the claimed compound. A+B ?? & cise.ntut 25
  26. 26. Unobviousness:2010 KSR Guidelines Update-Substituting One Known Element for Another(3) Non-obvious case yr Teaching point case Procter & Gamble Fed. Cir. It is not necessary to select a single compound as a Co. v. Teva 2009 ‘‘lead compound’’ in order to support an obviousness Pharmaceuticals rejection. However, where there was reason to select USA, Inc., 566 and modify the lead compound to obtain the claimed F.3d 989 compound, but no reasonable expectation of success, the claimed compound would not have been obvious. Altana Pharma AG Fed. Cir. Obviousness of a chemical compound in view of its v. Teva 2009 structural similarity to a prior art compound may be Pharms. USA, Inc., shown by identifying some line of reasoning that would 566 F.3d 999 have led one of ordinary skill in the art to select and modify a prior art lead compound in a particular way to produce the claimed compound. This claim is It is not necessary for the reasoning to be explicitly obvious found in the prior art of record, nor is it necessary for the prior art to point to only a single lead compound. & cise.ntut 26
  27. 27. Unobviousness:2010 KSR GuidelinesUpdate-The Obvious To Try Rationale(1) case yr Teaching point obvious caseIn re Kubin, Fed. A claimed polynucleotide would have been obvious over the561 F.3d Cir. known protein that it encodes where the skilled artisan would1351 2009 have had a reasonable expectation of success in deriving the claimed polynucleotide using standard biochemical techniques, and the skilled artisan would have had a reason to try to isolate the claimed polynucleotide. KSR applies to all technologies, rather than just the ‘‘predictable’’ arts.Takeda Fed. A claimed compound would not have been obvious where itChem. Indus. Cir. was not obvious to try to obtain it from a broad range ofv. 2007 compounds, any one of which could have been selected as theAlphapharm lead compound for further investigation, and the prior artPty., Ltd., taught away from using a particular lead compound, and there492 F.3d was no predictability or reasonable expectation of success in1350 making the particular modifications necessary to transform the Non-obvious lead compound into the claimed compound. case & cise.ntut 27
  28. 28. Unobviousness:2010 KSR GuidelinesUpdate-The Obvious To Try Rationale(2) Non-obvious case yr Teaching point caseOrtho-McNeil Fed. Where the claimed anti-convulsant drug had beenPharmaceutica Cir. discovered somewhat serendipitously in the course ofl, Inc. v. Mylan 2008 research aimed at finding a new anti-diabetic drug, it wouldLabs, Inc., 520 not have been obvious to try to obtain a claimed compoundF.3d where the prior art did not present a finite and easily1358 traversed number of potential starting compounds, and there was no apparent reason for selecting a particular starting compound from among a number of unpredictable alternatives.Bayer Schering Fed. A claimed compound would have been obvious where itPharma A.G. v. Cir. was obvious to try to obtain it from a finite and easilyBarr Labs., Inc., 2009 traversed number of options that was narrowed down from575 F.3d 1341 a larger set of possibilities by the prior art, and the outcome of obtaining the claimed compound was reasonably predictable. obvious case & cise.ntut 28
  29. 29. Unobviousness:2010 KSR GuidelinesUpdate-The Obvious To Try Rationale(3) case yr Teaching point Non-obvious caseSanofi- Fed. A claimed isolated stereoisomer would not have beenSynthelabo v. Cir. obvious where the claimed stereoisomer exhibitsApotex, Inc., 2008 unexpectedly strong therapeutic advantages over the prior550 F.3d 1075 art racemic mixture without the correspondingly expected toxicity, and the resulting properties of the enantiomers separated from the racemic mixture were unpredictable.Perfect Web Fed. Where there were a finite number of identified,Techs., Inc. v. Cir. predictable solutions and there is no evidence ofInfoUSA, Inc., 2009 unexpected results, an obvious to try inquiry may properly587 F.3d 1324 lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness obvious case so long as it is explained with sufficient reasoning.Rolls-Royce, PLC Fed. An obvious to try rationale may be proper when thev. United Cir. possible options for solving a problem were known andTechnologies 2010 finite.Corp., 603 F.3d However, if the possible options were not either known or1325 finite, then an obvious to try rationale cannot be used to support a conclusion of obviousness. 29 & cise.ntut
  30. 30. Unobviousness:2010 KSR GuidelinesUpdate - Consideration of Evidence (1) case yr Teaching point PharmaStem Fed. Cir. Even though all evidence must be considered in Therapeutics, 2007 an obviousness analysis, evidence of Inc. v. ViaCell, nonobviousness may be outweighed by Inc., 491 F.3d contradictory evidence in the record or by what is 1342 in the specification. Although a reasonable expectation of success is needed to support a case of obviousness, absolute predictability is not required. In re Sullivan, Fed. All evidence, including evidence rebutting a prima 498 F.3d Cir. facie case of obviousness, must be considered 1345 2007 when properly presented. Consider the evidence as possible as you can & cise.ntut 30
  31. 31. Unobviousness:2010 KSR Guidelines Update - Consideration of Evidence (2) Business consideration case yr Teaching pointAsyst Techs., Inc. v. Fed. Cir. Evidence of secondary considerations of obviousnessEmtrak, Inc., 544 2008 such as commercial success and long-felt need may beF.3d 1310 insufficient to overcome a prima facie case of obviousness if the prima facie case is strong. An argument for nonobviousness based on commercial success or long-felt need is undermined when there is a failure to link the commercial success or long-felt need to a claimed feature that distinguishes over the prior art.Hearing Fed. Cir. Evidence that has been properly presented in a timelyComponents, Inc. 2010 manner must be considered on the record.v. Shure Inc., 600F.3d 1357 Evidence of commercial success is pertinent where a nexus btw the success of the product and the claimed invention has been demonstrated. 31 & cise.ntut
  32. 32. A. Is invention in a statutory class The patentability (machine, article, process, composition, flowchart or new use)? N Y E. Does it have one or more of the B. Is it useful? secondary indications of N unobviousness? Y C. Does it have novelty (new physical feature, new combination or F. If the invention is a combination of N arrangement of old individually old features, continue with feature, or new use box G; otherwise go directly to the end. of old feature)? Y D. Would the novelty Y G. The results achieved by the be unobvious to a combination > ∑ (the results of the PHOSITA – that is, possibly N prior-art reference), i.e. synergism does the novelty exists. produce any new & N Y unexpected result? Y N H. PTO is very J. PTO is I. PTO is likely to× PTO probably will refuse to grant a patent. See if probably likely to grant a you can use another from of offensive rights, grant a grant a patent market as a trade secret, or invent something else. patent patent 32 & cise.ntut
  33. 33. E. Does it have one or more of thesecondary indications of unobviousness?(the more the better) It succeeds where others failed It successfully solves a problem never before even recognized It successfully solves a problem previously thought or found insolvable It has attained commercial success It’s classified in a crowded art where a small advance carries great weight It omits an element in a prior art arrangement without loss of capability It contains a modification not suggested in the prior art It provides an advantage which never before was appreciated It provides an operative result where before failure prevailed It successfully implements an ancient, but never implemented, idea It solves a long-felt, long-existing, and unsolved need It is contrary to the teachings of the prior art 33 & cise.ntut
  34. 34. G. The results achieved by the combination> ∑ (the results of the prior-art reference),i.e. synergism exists. The combination is not expressly suggested or implied by the prior art The prior-art references could not be combined physically The references would not show the invention, even if physically combined The prior-art references would not operate if combined > 3 references would have to be combined to show the invention The references themselves teach they should not be combined Awkward, separate, or involved steps are required to combine the references The references are from different technical fields than each other or from the invention It provides synergism (results > ∑ (the results of references)) 34 & cise.ntut
  35. 35. Summary• The law(Section 102) recognizes 3 types of novelty – Physical (hardware or method), New combination & New use – Talk two-step process (Sections 102 & 103) btw novel features (§ 102) & unobviousness (§ 103)• Survey patentability req.4 unobviousness (section 103) – start 383 U.S. 1 (1966) -> 2007 KSR Guidelines for obvious -> 2010 KSR guidelines update• summary The patentability flowchart & cise.ntut 35
  36. 36. Homework• Go to to search the related articles by your idea & group idea (at least 2 cases) – One for your idea; the other for group idea – 2 articles for group idea if your idea has been combined – Hint: • extend idea to show the “unusual & surprising” results • Try to describe “an inventive step”• Team work – Determine those 2 cases by using the check lists at patentability flowchart (P.32) - box E (P.33) & box G (P.34) & cise.ntut 36
  37. 37. Improve “team” innovations• Sometimes when you innovate, you make mistakes. It is best to admit them quickly, and get on with improving your other innovations – Steve Jobs(1955-2011) 3D printer Inventor: Jake Zien, Pivotable Surge Protection, Ref: Invented Together at 37 & cise.ntut
  38. 38. 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, WM2Patent, Patent Requirement (novelty)• 2010 KSR Guidelines Update, here• Blog: – Introduce hybrid TV/Smart TV (hbbTV) including widget design, Android technology (API), system, ecosystem, framework, service, application…, – Agile for progressing: • About how to teamwork – Some programming info. as Apache wookie, refactoring tech, CE-HTML, a solution about removing a backdoor “Trojan” & surveillance paper 38 & cise.ntut