Considerations for writing background section of a patent specification with case law references from US

1. Patent Spec Training Series
Introduction and Writing background section

2. Application requirement
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India – Section 7 (chapter 3)
US – 35 USC 111
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3. Contents of the specification – US
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Title of the invention
Cross-reference to related applications
Statement regarding federally sponsored research or development
The names of the parties to a joint research agreement
Reference to a "Sequence Listing"
Background of the invention
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(1) Field of the invention
(2) Description of related art including information disclosed under IDS
Brief summary of the invention
Brief description of the several views of the drawing
Detailed description of the invention
Claim(s) (commencing on a separate sheet)
Abstract of the Disclosure (commencing on a separate sheet)
Sequence Listing
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4. Contents of the specification – India
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Title
Field of the Invention and use of Invention
Prior Art and problem to be solved
Objects of the Invention
Summary of the Invention
Detailed Description of Invention
Drawings
Abstract
Claims
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5. Background requirements – US
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“The specification must set forth the precise
invention for which a patent is solicited, in
such manner as to distinguish it from other
inventions and from what is old.” (37 CFR
1.71)
But, no real guideline on what should be or
should not be part of the background section
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6. Background requirements – India
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“This part should indicate the status of the technology in the
field of invention with reference to developments in the field,
patents and pending patent applications in the specific art.”
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“When the invention relates to an improvement on an existing
product or process, a short statement of the closest prior art
known to the applicant shall also be given.”
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“However, the description should fully and particularly
describe the invention, by clearly distinguishing it from such a
closest prior art, known to the applicant.”
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7. Background requirements – India
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Objects of the invention
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“The purpose of this part is to clearly bring out
the necessity of the invention. It shall clearly
mention the technical problems associated with
the existing technology and the solution for that,
bringing out the obvious differences between the
claimed invention and the prior art.”
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8. Relevant Case Law

9. KSR v. Teleflex
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Facts
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Teleflex, Inc. sued KSR International, claiming that one of
KSR's products infringed Teleflex's patent[1] on connecting
an adjustable vehicle control pedal to an electronic
throttle control. KSR argued that the combination of the
two elements was obvious, and the claim was therefore
not patentable.
The district court ruled in favor of KSR
The Court of Appeals for the Federal Circuit reversed the
decision.
The Supreme Court reversed the judgement unanimously
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10. KSR v. Teleflex
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Impact on Background
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“The combination of familiar elements according to known
methods is likely to be obvious when it does no more than
yield predictable results.”
“In determining whether the subject matter of a patent
claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is
the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103. One of the ways
in which a patent's subject matter can be proved obvious is
by noting that there existed at the time of invention a
known problem for which there was an obvious solution
encompassed by the patent's claims.”
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11. Rule 1
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Keep description of prior art simple
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Avoid characterizing any specific prior art
When talking about prior art in general, avoid
suggesting that the invention is based on known
elements and known functions of such elements
When not possible, need to demonstrate
unpredictability of the result in the specification
Avoid suggesting that the problem is well known
in the prior art
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12. In re O’Farrell
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Facts
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Examiner rejects the claims for “A method for
producing a predetermined protein in a stable
form in a transformed host species of bacteria”
BPAI affirms patent examiner's final rejection of
patent application entitled "Method and Hybrid
Vector for Regulating Translation of
Heterologous DNA in Bacteria.“
The Court of Appeals for the Federal Circuit
affirms the decision.
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13. In re O’Farrell
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Impact on Background
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Obvious-to-try does not mean obviousness
Explores the circumstances where it is obvious-to-try but the
invention is non-obvious
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“In some cases, what would have been "obvious to try" would
have been to vary all parameters or try each of numerous
possible choices until one possibly arrived at a successful result,
where the prior art gave either no indication of which
parameters were critical or no direction as to which of many
possible choices is likely to be successful.”
“In others, what was "obvious to try" was to explore a new
technology or general approach that seemed to be a promising
field of experimentation, where the prior art gave only general
guidance as to the particular form of the claimed invention or
how to achieve it.”
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14. Rule 2
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Do not suggest that the invention is obviousto-try
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Avoid characterizing prior arts that provide
guidance in the direction of invention
For improvement patents, ensure that one of the
following is established
Invention involves choosing a particular option out
of a large set of options that was not suggested by
the prior art; and/or
 Improvement involves exploration of new
technology that was not suggested by the prior art
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15. Pfizer v. Apotex
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Facts
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Norvasc is Pfizer's patented blockbuster drug for
treating hypertension and angina
The trial court upholds Pfizer's patent and issues
an injunction stopping Apotex from making a
generic version
The Court of Appeals for the Federal Circuit
invalidates Pfizer's patent, finding it obvious.
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16. Pfizer v. Apotex
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Impact on Background
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“.. prior art provided not only the means of
creating acid addition salts but also predicted the
results, which Pfizer merely had to verify through
routine testing.”
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17. Rule 3
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Do not suggest that the invention is based on
routine experimentation based on known
elements and known functions (conditions)
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Avoid characterization of specific prior art that
suggests the elements or predicts the results
even in general
When not possible, need to establish
unpredictability of results
Please note that obviousness does not require
absolute predictability of success. (In re O’Farrell)
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18. Some pet peeves
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Lack of flow of logic from one paragraph to
another
Informal language
Inappropriate sentence formation
Inappropriate use of articles
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19. Example
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Invention:
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Method of organizing data in an enterprise for
ease of access
Preferred embodiment uses Internet as a means
Background
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Starts with how Internet has impacted lives
How organizations cannot access data without
Internet
Establishing a need for easy access of data using
Internet
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20. The logging server was
never introduced before
Example
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There is no specific data
path that you can refer to
“Also, rate limiting of the network traffic
occurs at the debug logging server level. The
logging server has to rate-limit the logs
generated by the data path, which will
continuously keep on generating logs, hence
adversely affecting the performance of the
router/switch.”
Informal language
Complex sentence and no
clear articulation
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21. Summary
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Avoid content in background that hints that the
invention at hand
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is based on
 Known functions of known elements leading to
predictable results
Or is based on
 Routine finding/experimentation
Or is
 Obvious-to-try
Or
 Solves a known problem with generally known elements
in the prior art
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22. Summary
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Understand the problem that the invention is trying
to solve
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Not enough to understand the preferred embodiment
Avoid talking about specific embodiment details in
background; focus on the larger problem
Follow basic writing rules
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Plan for the flow of logic before writing
Ensure that there is flow of logic from one para to another
Follow basic grammar rules and usage of proper articles
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23. Conclusion
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Keep background very simple
Establish need for invention in a generic
sense without characterizing any specific
prior art
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24. Questions?
Contact:
Arun Narasani
Founder, ipMetrix
arun@ipmetrix.com