Determining whether specific subject matter is patentable is a very difficult task. Therefore, the PTO has many rules and guidelines used to help sort out this dilemma. The patentability guidelines extend to living subject matter and computer related inventions as well as basic engineering designs.

The statutes under 35 U.S.C. 101, 102 and 103 are used to reject an application's disclosed subject matter. 35 U.S.C. 101 discusses the types of inventions that are patentable. 35 U.S.C. 102 discusses the conditions for patenting in as far as their novelty requirements and the loss of the right to patent. 35 U.S.C. 103 states the conditions for patenting in relation to nonobvious subject matter.

35 U.S.C. 102 and 103 discuss rejections that are based on prior art. 102 deals with rejections where the prior art is the same as the claimed subject matter in the application. 103 deals with rejections where the claimed subject matter in the application is obvious based on the prior art. The details of both types of rejections and ways for an applicant to overcome them are presented.

The requirements for the specification are outlined in the six paragraphs under 35 U.S.C. 112. The general requirements for a specification can be broken down into three basic categories; the written description, the enablement and the best mode.

This chapter is tested very heavily. You should plan to memorize all the sections of 35 U.S.C. 102 including how to overcome each type of rejection. 35 U.S.C. 103 is also very important. Pay special attention to the specification requirements under 35 U.S.C. 112. Learning the material presented in this chapter is key to passing the patent bar exam.

 

What can be Patented?
The following section attempts to provide an overview relating to patentability. It covers general inventive types including living subject matter and computer related inventions.

Patentability:
Anything under the sun that is made by man may be patentable. 35 U.S. C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
an invention must have practical applications in addition to being nonobvious and novel

four categories of inventions exist:
machines
manufactures
compositions of matter
processes

machines:
a concrete thing, consisting of parts or of certain devices and combinations of devices
manufactures:
the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties or combinations, whether by hand labor or by machinery
compositions of matter:
a composition of two or more substances or a composite article whether it be the result of chemical union or of mechanical mixture

processes:
involve actions; a process, art or method and includes a new use of a known process, machine, manufacture, compositions of matter or material
a product can be claimed by describing the process used to manufacture it: this is especially useful when filing patents for products that are hard to describe
the end product must be unique
if a process or method is unique, then the applicant needs to file a patent on the method or process not the product

since in a patent it is presumed that a process, if used by one skilled in the art, will produce the product or result described therein, such a presumption is not overcome by a mere showing that it is possible to operate within the disclosure without obtaining the alleged product

Claims in relation to patentablility:
in the absence of an express intent to impart a different meaning claim terms are presumed to have the ordinary and customary meanings attributed to them by those of ordinary skill in the art
claims define the property rights provided by a patent
claims should be precise and unambiguous
for processes, the claim limitations will define the steps or acts to be performed
a claim cannot recite both a product and a process in the same claim
for products, the claim limitations will define discrete physical structures or materials
product claims are directed to either machines, manufactures or compositions of matter

examples of language that may raise a question as to the limiting effect of the language in a claim include:
statements of intended use or field of use
"adapted to" or "adapted for" clauses
"wherein" clauses
"whereby" clauses
claims define nonstatutory (nonpatentable) processes if they:
consist solely of mathematical operations without some claimed practical application
simply manipulate abstract ideas without some claimed practical application

if the invention in the written description is statutory (patentable), but the claims define subject matter that is not, the deficiency can be corrected by an appropriate amendment to the claims
there is a concern over the "preemption" of ideas, laws of nature or natural phenomena:
for example; a claimed process which consists solely of the steps that one must follow to solve the mathematical representation of E=mc2 is indistinguishable from the law of nature and would "preempt" the law of nature

2105 Patentable subject matter living subject matter
the laws of nature, physical phenomena and abstract ideas are not patentable; some examples of these nonpatentable ideas include:
new minerals discovered in the earth
new plants found in the wild
the law of gravity

Basics of patentability:
If something is naturally occurring, it cannot be patented. Patentable inventions are those that are modified under the sun by man" . Therefore, patentable inventions are products of human ingenuity with a distinctive name, character and use.

microorganisms that are produced by genetic engineering can be patented living material resulting from human intervention can be patented

nonnaturally occurring, nonhuman multicellular living organisms, including animals are patentable

the broadest interpretation of a claimed invention is a human being
the invention would be rejected because it is nonstatutory subject matter

characteristics of patentable inventions:
the invention must produce a "useful, concrete and tangible result" with "real world" value
it must be more than an idea or concept or simply a starting point for future investigation

Productbyprocess claims:
the patentability of a product claimed by a productbyprocess claim is based on the product itself

the invention must not be a naturally occurring composition

the claim must not recite both a product and a process in the same claim

when the article is preexisting, one may only secure the patent protection of the method for using the article

'Plant Patent Act of 1930 (see Chapter 1600):

the work of the plant breeder "in aid of nature" is patentable

patentable matter includes seeds and seedgrown plants

2106 Patentable subject matter computerrelated inventions
Computer programs may be patented, however, mere instructions cannot. The computer program must either be a method that is novel, or a system that instructs a computer to perform a particular action. Functional descriptive material may be patented, while nonfunctional descriptive material are not.

Characteristics of computer related inventions:
patentable subject matter may include inventions implemented in a computer and those employing computerreadable media

merely claiming nonfunctional descriptive material stored in a computerreadable medium does not make the invention eligible for patenting

claimed computerrelated process must either:
result in a physical transformation outside the computer for which a practical application in the technological arts is either disclosed in the specification or would have been known to a skilled artisan
be limited to a practical application within the technological arts

functional descriptive material:
data structures and computer programs that have a function when used as a computer component are considered functional and therefore, may be patentable (also called statutory)
when functional descriptive material is recorded on a computer readable medium it will usually be patentable

nonfunctional descriptive material:
some examples are music, literary works and a compilation or mere arrangements
of data
when nonfunctional descriptive material is recorded on some computerreadable
medium, it is not patentable
music is not a computer component and does not become patentable by merely
recording it on a compact disc

Safe harbors:
a process is statutory if it requires physical acts to be performed outside the computer
independent of and following the steps to be performed by a programmed computer:
acts involving the manipulation of tangible physical objects and resulting in the object having a different physical attribute or structure are statutory
examples:
curing rubber using a computer processor to determine a time period for curing the rubber
controlling a mechanical robot

Statutory process:
a process is statutory if the measurements of physical objects or activities are to be transformed outside of the computer into computer data, for example:
using a computer processor to analyze electrical signals and data representative of human cardiac activity by converting the signals to time segments
CAT scan images of a patient
computer processor to conduct seismic exploration

Nonstatutory process:
a process is nonstatutory if it merely manipulates an abstract idea or performs a purely mathematical algorithm even if it has some usefulness

Patentability Rejections

2107 General principles governing utility rejections
This section describes the principles behind rejections based on utility (whether or not an invention has any use) and obviousness based on one or more prior art references. In addition, there is a discussion on how to interpret claims within the scope of these utility or obviousness rejections.

Usefulness of the invention:

Useful inventions:
have a practical utility or specific utility without having to pursue further research to identify or reasonably confirm it

an applicant must identify why an invention is useful (unless it has a wellestablished utility), otherwise the claimed invention will be deficient under 35 U.S.C. 101 and 35 U.S.C. 112 first paragraph

Inoperative inventions:
include those that do not operate to produce the results claimed by the patent applicant
must be totally incapable of achieving a useful result

an invention that performs crudely, or is not commercially successful, does not accomplish all its intended functions or only has partial success may still be useful

deficiencies under the "useful invention" requirement of 35 U.S.C. 101 will arise in one of two forms:
where it is not apparent why the applicant believes the invention to be useful where an assertion of specific utility for the invention made by an applicant is not credible

Credibility:
assertion of the utility must be credible (must be believable to a person of ordinary skill in the art based on the totality of evidence and reasoning provided)

disclosure of utility:
a claimed invention must have a specific and substantial utility
this excludes such examples as using a complex invention for landfill (this is obviously not a good or valid use)
an applicant need only provide one credible assertion of specific utility for each claimed invention to satisfy the utility requirement
any rejection based on a lack of utility should include a detailed description as to why the claimed invention has no special or substantial utility
the examiner should provide documented evidence regardless of the publication date

an invention has a well established utility if a person of ordinary skill in the art can immediately appreciate why the invention is useful based on the characteristics of the invention
the utility should be specific, substantial and credible
where an asserted special and substantial utility is not credible, a prima facie showing of no specialization or substantial utility must establish that it is more likely than not that a person skilled in the art would not consider any special and substantial utility asserted by the applicant for the claimed invention as credible

Prima facie showing:
a prima facie showing must explain why a person of ordinary skill in the art would conclude that it is more likely than not that an asserted utility is not credible

to reject a claimed invention under 35 U.S.C. 101, the Office must:
make a prima facie showing that the claimed invention lacks utility
provide a sufficient evidentiary basis for factual assumptions relied upon in establishing the prima facie showing

an applicant may overcome a rejection by an examiner who established a prima facie showing of no specific and substantial credible utility for a claimed invention by:
providing reasoning or arguments
amending claims
providing evidence in the form of a declaration under 37 C.F.R. 1.132 providing evidence in the form of a printed publication rebutting the basis or logic of the prima facie showing

Therapeutic or pharmacological utilities:
any evidence of a pharmacological or other biological activity of a compound will be relevant to an asserted therapeutic use if there is a reasonable correlation between the activity in question and the asserted utility

even the mere identification of a pharmacological activity of a compound that is relevant to an asserted pharmacological use provides an "immediate benefit to the public"

the fact that there is no known cure for a disease cannot serve as the basis for a conclusion that such an invention lacks utility

the claimed invention just needs to be shown useful in treating a symptom of an incurable disease for it to have utility

evidence of structural similarity to a compound known to have a particular therapeutic or pharmacological utility is being supportive of an assertion of therapeutic utility for a new compound and establishes that compound as useful

Analysis of compound(s):
data generated using in vitro assays or testing in animal models is usually sufficient to establish a therapeutic or pharmacological utility for a compound, composition or process

applicants are not required to provide data from human clinical trials to establish utility for an invention related to the treatment of human disorders

FDA approval is not a prerequisite for finding a compound useful within the meaning of the patent laws

the requirements of 35 U.S.C. 101 for a "practical" utility is one that is safe or fully effective for human or animal consumption

2111 Claim interpretation; broadest reasonable interpretation Transitional phrases frequently used in claims and their meanings.
'Transitional phrases:
"comprising":
is inclusive or openended and does not exclude additional, unrecited elements or method steps
"including" and "characterized by" are synonymous with comprising

"consisting essentially of':
limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention for the purposes of searching for and applying prior art under 35 U.S.C. 102 or 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, the term "consisting essentially of' will be construed as equivalent to "comprising"

"consisting of':
cannot add an element or step, synonymous with comprising
the phrase "consisting of' excludes any step not specified in the claim a claim that depends from a claim which includes the term, "consisting of' within the recited steps cannot later add a step

where an applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim, but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103, expressed as a 102/103 rejection

Inherency:
an inherent feature need not be recognized at the time of the invention

under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device

the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic

inherency is not necessarily coterminous with knowledge of those of ordinary skill in the art, artisans of ordinary skill may not recognize the inherent characteristics of the functioning of the prior art, however, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition new to the discoverer
the same reasoning is true when it is not a property, but an ingredient, which is
inherently contained in prior art

to qualify as a proper prior art reference, the anticipated claimed invention is not required to recognize an inherent property

Prior Art Rejections (see Appendix I Prior Art Rejections)
All the information pertaining to Prior Art Rejections under 35 U.S.C. 102 and 35 U.S.C. 103 was put into a separate section in the Appendices. The reason being is that these are two VERY important areas of Patent Law. They will be heavily tested on the exam.

The MPEP contains about half the material pertaining to these two statutes in Chapter 700 and the other half in Chapter 2100. Therefore, all the material pertaining to 102 and 103 was combined in an easier to understand and more useful manner. Please remember to read this section carefully.

Specification Requirements
The specification is a very important component of any patent application. As you may guess, the PTO expects the specification to meet their standards. For example, it must contain a written description, enablement and the best mode of the invention. In addition, it should end with one or more claims. These claims are expected to match the information present in the rest of the specification.

35 U.S.C. 112 discusses the requirements of the specification. Examiner's commonly reject applications under 35 U.S.C. 112 due to an error with the specification.

35 U.S.C. 112 Specification
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

an application will be deficient under 35 U.S.C. 112 when:
evidence, including admissions from sources other than just in the application as filed, show that the applicant has stated that he or she regards the invention to be different than from what is claimed
the scope of the claims is unclear

First Paragraph

2161 Three separate requirements for specification under 35 U.S.C. 112, first paragraph

35 U.S.C. 112 Specification
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

the rules outlined in 35 U.S.C. 112, lst paragraph call for three separate and distinct requirements for the specification of all applications, these requirements include:
an adequate written description
an enabling disclosure (which explains the manner and process for making and using the invention)
the best mode contemplated by the inventor for carrying out the invention
the three requirements are separate and distinct from each other

2162 Policy underlying 35 U.S.C. 112, first paragraph
the specification must contain an adequate disclosure

the applicant must disclose sufficient information to put the public in possession of the invention and enable those skilled in the art to make and use the invention
the applicant must not conceal from the public the best way of practicing the
invention that was known to him or her at the time of filing the patent application

2163 The written description requirement
The essential goal of the written description requirement is to clearly convey that the applicant has invented the subject matter which is claimed.
it must convey that as of the filing date sought, the inventor was in possession of the invention
he or she must know how it works

the written description:
requires an essential feature in the original claims, the feature must also be described in the specification or claims, and must not be conventional in the art or known to one of ordinary skill in art
it must not show any missing pieces
describing an actual reduction to practice of the claimed invention is a means of showing possession of the invention
newly added claim limitations must be supported by the specification through express, implicit or inherent disclosure

an amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of the error in the specification, but also recognize the appropriate correction

the subject matter of a claim is supported by the disclosure of an application as filed

the description must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed

original claims constitute their own description

the fundamental factual inquiry is whether a claim defines an invention that is clearly conveyed to those skilled in the art at the time the application was filed

Signs of an inadequate written description:
failure to meet the written description requirement commonly arises when the claims are changed after filing to either broaden or narrow the breadth of the claim limitations, or to alter a numerical range limitation or to use claim language which is not synonymous with the terminology used in the original disclosure

a broad generic disclosure is not necessarily a sufficient written description of a specific embodiment, especially where the broad generic disclosure conflicts with the remainder of the disclosure

a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguish them from the reference does not comply with requirements of this section

a general allegation of unpredictability in the art is not a sufficient reason to support a rejection for lack of an adequate written description
a filed description is presumed to be adequate, unless evidence showing otherwise can be produced:
to show that it is inadequate, the examiner must produce a preponderance of evidence explaining why a person skilled in the art would not recognize the invention defined in the claims from reading the written description

Amendments:
when filing an amendment, the applicant should show support in the original disclosure for any new or amended claims

an amendment to the specification may indirectly affect a claim even though no actual amendment is made to the claim

when there is substantial variation within a genus, an applicant must describe a sufficient variety of species to reflect the variation within the genus

2164 The enablement requirement
The specification must be enabling to a person "skilled in the art to which it pertains, or with which it is most nearly connected". Basically, people have to be able to use the darn thing. The inventor has to know how it works and the specification must convey how to make and use the invention.

Filing dates and state of art:
an application cannot use a patent to prove the state of art for the purpose of satisfying the enablement requirement if the patent has an issue date after the effective filing date of the application
a later dated publication cannot be used to enable an earlier dated application

the enablement is judged at the date of filing and a later dated reference cannot be used to establish the enablement

facts about the enabling disclosure:
the specification must enable a person skilled in the art to make and use the claimed invention without undue experimentation
the disclosure must be consistent with published information
enablement for the claims in a utility application is found in the specification preceding the claims
as opposed to being in the claims, the claims do not provide their own enablement
the lack of necessity to theorize or explain the failures does not alleviate the inventor from complying with 35 U.S.C. 112, first paragraph by providing an enabling disclosure that is commensurate in scope with the claims
it should explain the configuration or the integration of the invention with other elements

the state of the art existing on the filing date of the application is used to determine whether a particular disclosure is enabling as of the filing date
publications dated after the filing date providing information publicly first disclosed after the filing date generally cannot be used to show what was known at the time of filing

a publication dated after the effective filing date of the application may be properly used to demonstrate that an application is nonenabling if the publication provides evidence of what one skilled in the art would have known on or before the applications effective filing date
the examiner can look to later dated art if the art discloses the state of the art at the time of the invention

Requirements for the enablement:
as long as the specification discloses at least one method for making and using the claimed invention that bears a reasonable correlation to the entire scope of the claim, then the enablement requirement of 35 U.S.C. 112 is satisfied

the specification should include a connotation of how to use, and/or that the art already recognizes that standard modes of administration are known and contemplated

if all the other factors point toward enablement, then the absence of working examples will not by itself render the invention nonenabled

a correlation may refer to the relationship between in vitro and in vivo animal model assays and a disclosed or a claimed method of use (for all the nonscientists, in vitro refers to experiments performed outside a living system, like in a flask or test tube; in vivo refers to experiments performed in a living system such as a mouse or rat):
an in vitro or in vivo animal model example in the specification, in effect, constitutes a working example if that example correlates with a disclosed or claimed method invention

the more that is known in the prior art about the nature of the invention, such as how to make and use the invention, and the more predictable the art is, the less information will need to be explicitly stated in the specification

the evidence provided by an applicant need not be conclusive but merely convincing to one skilled in the art

an applicant should be encouraged to provide any evidence to demonstrate that the disclosure enables the claimed invention
in chemical and biotechnical applications, evidence that was submitted to the FDA to obtain approval for clinical trials may be submitted

to overcome a prima facie case of lack of enablement, an applicant must demonstrate by argument and/or evidence that the disclosure, as filed, would have enabled the claimed invention for one skilled in the art at the time of filing

a claim which omits matter disclosed to be essential in the invention as described in the specification or in other statements of record may be rejected under 35 U.S.C. 112, first paragraph as not enabling

Undue experimentation:
the claimed invention must be enabled so that any person skilled in the art can make and use the invention without undue experimentation

the information contained in the disclosure of an application must be sufficient enough to inform those skilled in the relevant art how to both make and use the claimed invention

whether any undue experimentation is necessary includes the examination of the
following factors:
the breadth of the claims
the nature of the invention
the state of the prior art
the level of one of ordinary skill the level of predictability in the art
the amount of direction provided by the inventor
the existence of working examples
the quantity of experimentation needed to make or use the invention based on the
content of the disclosure

doubt may arise in reference to enablement because information is missing on one or more essential parts or relationships between parts which one skilled in the art could not develop without undue experimentation

2165 The best mode requirement
If an inventor comes up with a great idea that works well, it would violate the laws of patentability for the inventor to keep the "best mode" of making and using that invention for him/herself This best mode requirement forces an applicant to express the full disclosure of the claimed subject matter in order to receive a patent.

the best mode requirement keeps applicants from obtaining patent protection without making a full disclosure as required by the statute

the failure to disclose a better method will not invalidate a patent if the inventor, at the time of filing the application, did not know of the better method or did not appreciate that it was the best method

applicants are required to disclose the best mode even though the applicant may not have been the discoverer of that mode

facts about the best mode:
it restrains inventors from applying for patents while at the same time concealing from the public the preferred embodiments of their inventions which they have in fact conceived

affirmance of a best mode rejection must show that the quality of an applicant's best mode disclosure is so poor as to effectively result in concealment

to determine whether a specification discloses the best mode:
there must be a subjective determination as to whether or not the inventor knew of a best mode of practicing the invention at the time the application was filed
if the inventor had a best mode of practicing the invention, there must be an objective determination as to whether the best mode was disclosed in sufficient detail to allow one skilled in the art to practice it

considerations relevant to best mode:
a specific example of the best mode is not required
the best mode may be represented by a preferred range of conditions or group of reactants
a designation as best mode is not required
that the disclosure includes the best mode is enough to satisfy the statute
there is no requirement to update the best mode

if the best mode is not disclosed in the application, the defect cannot be amended by adding any new matter
the best mode requirement is a separate and distinct requirement from the enablement requirement
if there is no disclosure of best mode in the filed application, the applicant cannot submit an amendment seeking to put this into the specification, this would count as new matter

if an inventor discovers a new best mode, he or she cannot file an amendment to correct the application:
the best mode only refers to the bestknown mode at the time of filing
otherwise, this would be adding new matter, and new matter can never be added to a patent application to keep the earlier filing date

failure to disclose the best mode need not rise to the level of active concealment or grossly inequitable conduct in order to support a rejection or invalidate a patent
where an inventor knows of a specific material that will make possible the successful reproduction of the effects claimed by the patent, but does not disclose it, speaking instead in terms of broad categories, the best mode requirement has not been satisfied

Second Paragraph

2171 Two separate requirements for claims under 35 U.S.C. 112, second paragraph
Claims must set forth the subject matter that the applicants regard as their invention and particularly point out and distinctly define the boundaries of the subject matter that will be protected by the patent.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

claims must not be indefinite or they will be rejected under 35 U.S.C. 112, second paragraph

a single claim which claims both an apparatus and the method of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph

Example:
a process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon
is an example of an indefinite claim because it merely recites a use without any active, positive steps delimiting how this use is actually practiced

2172 Subject matter which applicants regard as their invention
a claim which fails to interrelate essential elements of the invention as defined by an applicant in the specification may be rejected under 35 U.S.C. 112, second paragraph for failure to point out and distinctly claim the invention

evidence that a claim may not comply with the second paragraph U.S.C. 112 occurs where:
remarks filed by the applicant in a reply or brief regarding the scope of the invention differ and do not correspond in scope with claim

if the format of making reference to limitations recited in another claim results in confusion, then a rejection would be proper under 35 U.S.C. 112, second paragraph

an agreement or lack thereof, between claims and the specification is properly considered only with respect to 35 U.S.C. 112, first paragraph, it is irrelevant in compliance with the second paragraph of that section

the second paragraph of 112 does not prohibit applicants from changing what they regard as their invention during the pendency of the application

if the presence in the claim causes confusion as to the scope of the claim it should be rejected under 35 U.S.C. 112, second paragraph

2173 Claims must particularly point out and distinctly claim the invention
A claim which fails to relate the essential elements of the invention as defined by the applicant(s) in the specification may be rejected under 35 U.S.C. 112 for failure to point out and distinctly claim the invention.

definiteness of claim language is to ensure:
that the scope of the claims is clear so that the public is informed of the boundaries of what constitutes infringement of the patent
a clear measure of what the applicants regard as their invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention

definiteness of claim language must be analyzed in light of:
the content of the particular application disclosure
the teachings of the prior art
the claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made

the claim(s) must meet the threshold requirements of clarity and precision

if a claim is rejected due to anticipation, deletion of the anticipated element from the claim can leave an invention that is no longer anticipated by the reference

inconsistency with the disclosure of the specification may make an otherwise definite claim take on an unreasonable degree of uncertainty

an optional element does not have to be disclosed in a reference for the claim to be anticipated

a claim that is too broad:
may be rejected under 35 U.S.C. 112, second paragraph if it is too broad because it does not set forth that which the applicants regard as their invention as evidenced by statements outside of the application as filed
may be rejected under 35 U.S.C. 112, first paragraph because it is not supported by the original description or by an enabling disclosure
may be rejected under either 35 U.S.C. 102 or 103 because it reads on the prior art

a patentee may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings:
they must make clear which definition is being relied upon to claim the invention
the applicants must define in the claims what they regard as their invention in whatever terms they choose so long as the terms are not used in ways that are contrary to the accepted meaning in the art

the examiner must consider the claim as a whole to determine whether the claim apprises one of ordinary skill in the art of its scope

while a single claim that includes both a broad and a narrower range may be indefinite, it is proper under 35 U.S.C. 112, second paragraph to present a dependent claim that sets forth a narrower range for an element than the range set forth in the range from which it depends

a claim is not per se indefinite if the body of the claim recites additional elements that do not appear in the preamble

genus, subgenus, and Markushtype claims, if properly supported by the disclosure, provide acceptable ways to present claims of different scope

if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims

there is no per se rule that "double inclusion" is improper in a claim

a claim may be rendered indefinite by reference to an object that is variable:
for example, a claim expressing the wheelbase of a bicycle as:
..."58 percent and 75 percent of the height of the rider"
the relationship of the part was not based on any known standard for sizing a bicycle to a rider, but on a rider of unspecified build

Fourth Paragraph
35 U.S.C., 4th paragraph:
A dependent claim cannot be broader than claim from which it depends.

Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

attention must be paid to the details of all ranges in the claims and make sure they match note that a statement such as, "up to 300 amps" includes 0 to 300 amps
this would be outside 100300 amp range

Terms:
terms commonly found to be definite include:
"about"
"essentially"
"substantially"
terms commonly found to be indefinite include:
"at least about"
"similar" "type"
"relatively shallow"
"of the order of'
"the order of about 5mm"
"substantial portion"
"or like material"
"comparable"
"superior"

Numerical ranges and amounts limitations:
use of a narrow numerical range that falls within a broader range in the same claim may render the claim indefinite when the boundaries of the claim are not discernible:
examples of indefinite claims:
"a temperature of between 45 and 78 degrees Celsius, preferably between 50 and 60 degrees Celsius"
"a predetermined quantity, for example, the maximum capacity"

openended numerical ranges may also render the claim indefinite:
the term "up to" includes zero as a lower limit

the phrase "an effective amount" may or may not be indefinite, the proper test is whether or not one skilled in the art could determine specific values for the amount based on the disclosure:
it is indefinite when the claim fails to state the function which is to be achieved
and more than one effect can be implied from the specification or the relevant art
a claim is indefinite when it contains words or phrases whose meaning is unclear
it is definite when read in light of the supporting disclosure and in the absence of any prior art which would give rise to uncertainty about the scope of the claim

a preferred narrower range set forth within a broader range may render the claim indefinite if the boundaries of a claim are not discernible

reciting within a single claim both a broad range and a preferred narrower range within the broad range may render the claim indefinite

the indefiniteness of claims may be shown by:
an effective amount of voltage:
has two functions; to "protect windshield glass from cracking" and "for defrosting windshields"
this example must be amended to state the function that is to be achieved otherwise it is indefinite

if stated in the claims, examples and preferences lead to confusion over the intended scope of a claim:
examples are:
"R is halogen, for example, chlorine"
"material such as rock wool or asbestos"
"lighter hydrocarbons, such as, the vapors or gas produced" "normal operating conditions such as while in the container of a proportioner"

a claim which makes reference to a preceding claim to define a limitation is an acceptable claim construction which should not necessarily be rejected as improper or confusing under 35 U.S.C. 112, second paragraph:
for example:
"the product produced by the method of claim 1"

a functional limitation is an attempt to define something by what it does, rather than by what it is (like its specific structure or specific ingredients)

functional language does not, in and of itself, render a claim improper

a limitation used to define a radical on a chemical compound as "incapable of forming a dye with said oxidizing developing agent" although functional, was perfectly acceptable because it set definite boundaries on the patent protection sought

More on the specification

Alternative limitations:
alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims

Markush groups:
Markush groups recite members as being "selected from the group consisting of A, B and C"
inventions in metallurgy, refractories, ceramics, pharmacy, pharmacology and biology are most frequently claimed under the Markush formula in addition to the claims for mechanical features or process steps
it is improper to use the term "comprising" instead of "consisting of'
materials set forth in the Markush group ordinarily must belong to a recognized physical or chemical class or to an artrecognized class (or must have at least one property in common and must be clear all the objects possess this property)

"or" terminology
acceptable phrases using "or"
"wherein R is A, B, C or D" "made entirely or in part of'
"at least one piece"
"iron, steel or any other magnetic material"

"optionally"
an alternative format which requires some analysis before concluding whether or not the language is indefinite involves the use of the term "optionally"
in the instance where the list of potential alternatives can vary and ambiguity arises, then it is proper to make a rejection under 35 U.S.C. 112, second paragraph and explain why there is confusion
the language "containing A, B and optionally C" was considered acceptable alternative language because there was no ambiguity as to which alternatives are covered by the claim

an "optional" element in a claim does not have to be disclosed in a reference for the claim to be anticipated

Negative limitations:
negative limitations are OK
for example..."said homopolymer being free from proteins, soaps, resins and sugars present in natural Hevea rubber" is acceptable
a rejection based on the principle of an old combination is no longer valid
an inventor who made an improvement or contribution to only one element of a generally old combination, should not be able to obtain a patent on the entire combination including the new and improved element

Aggregation:
rejections on the ground of aggregation should be based upon a lack of cooperation between the elements of the claim
example of aggregation: a washing machine associated with a dial telephone

Prolix:
claims may be rejected as prolix only when they contain such long recitations or unimportant details that the scope of the claimed invention is rendered indefinite thereby
claims are rejected as prolix when they contain long recitations or unimportant details which hide or obscure the invention

Multiplicity:
an unreasonable number of claims that is unreasonable in view of the nature and scope of the applicant's invention and the state of the art, may afford a basis for a rejection on the ground of multiplicity

Double inclusion:
the facts in each case must be evaluated to determine whether or not the multiple inclusion of one or more elements in a claim gives rise to indefiniteness in that claim

ProductByProcess:
a productbyprocess claim, is proper if it is a product claim that defines the claimed product in terms of the process by which it is made

"Use" claims:
attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112, second paragraph
when the article is preexisting, one may only secure patent protection of the method of using the article

Omnibus claims:
an example of an omnibus claim is: "a device substantially as shown and described"
claims of this sort are rejected under 35 U.S.C. 112, second paragraph
incorporation by reference to a specific figure or table is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim
claims to chemical compounds and compositions containing chemical compounds often use formulas that depict the chemical structure of the compound

Trademarks:
the presence of a trademark or trade name in a claim is not, per se, improper under 35 U.S.C. 112, second paragraph, but the claim should be carefully analyzed to determine how the mark or name is used in the claim

a trademark or trade name is used to identify a source of goods, and not the goods themselves
a trademark or trade name does not identify or describe the goods associated with the trademark or trade name

if the trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112, second paragraph

Sixth Paragraph

2181 Identifying a 35 U.S.C. 112, sixth paragraph limitation
The sixth paragraph includes "means or step plus function" limitations in a claim.

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

the specification need not describe the equivalents of the structures, material, or acts corresponding to the means (or step) plusfunction element

a claim limitation will be interpreted to invoke 35 U.S.C. 112, sixth paragraph if it meets the following 3prong analysis:
the claim limitations must use the phrase "means for" or "step for"
the "means for" or "step for" must be modified by functional language
the phrase "means for" or "step for" must not be modified by structure, material or acts for achieving the specified function

if an applicant wishes to have the claim limitation treated under 35 U.S.C. 112, sixth paragraph, the applicant must either:
amend the claim to include the phrase "means for" or "step for" in accordance with these guidelines
or
show that even though the phrase "means for" or "step for" is not used, the claim limitation is written as a function to be performed and does not provide any structure, material, or acts which would preclude the application of 35 U.S.C. 112, sixth paragraph

limitations that fall within the scope of 35 U.S.C. 112, sixth paragraph include:
a jet driving device so constructed and located on the rotor as to drive the rotor
"printing means" and "means for printing" which would have the same connotations

a means(or step) plusfunction claim limitation satisfies 35 U.S.C. 112, second paragraph if:
the written description links or associates particular structure, materials, or acts to the function recited in a means (or step) plusfunction claim limitation
or
it is clear based on the facts of the application that one skilled in the art would have known what structure, materials, or acts perform the function recited in a means (or step) plusfunction limitation

invocation of the 6th paragraph of 112 does not exempt the application from compliance with the first or second paragraph of 112

if a claim limitation invokes the 6th paragraph of 112, it must be interpreted to cover the corresponding structure, material, or acts in the specification and "equivalents thereof'

if a meansplusfunction language is employed in a claim, the specification must set forth an adequate disclosure showing what that language means

a meansplusfunction claim limitation satisfies the second paragraph of 112 if the written description links or associates a particular structure, material or acts to the function recited in a meansplusfunction claim limitation

a stepplusfunction claim limitation satisfies the second paragraph of 112 if it is clear based on the disclosure in the application that one skilled in the art would have known what structure, material or acts perform the function recited in a stepplusfunction limitation

2183 Making a prima facie case of equivalence
a prior art element is equivalent to the corresponding element disclosed in the specification

if the examiner finds that a prior art element performs the function specified in the claim, and is not excluded by any explicit definition provided in the specification for an equivalent, the examiner should infer that the prior art element is an
equivalent
it should be concluded that the claimed limitation is anticipated by the prior art element

2184 Determining whether an applicant has met the burden of proving nonequivalence after a prima facie case is made
if the applicant disagrees with the inference of equivalence drawn from a prior art reference, the applicant may provide reasons why the prior art element should not be considered an equivalent to the invention disclosed in the specification:
such reasons may include:
teachings in the specification that the particular prior art is not equivalent
teachings in the prior art reference itself that may tend to show nonequivalence
37 CFR 1.132 affidavit evidence of facts tending to show nonequivalence

factors determining whether one element is or is not an equivalent of another include:
whether the prior art element performs the function specified in the claim in
substantially the same way, and produces substantially the same results as the
corresponding element disclosed in the specification
whether a person of ordinary skill in the art would have recognized the

interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification
whether the prior art element is a structural equivalent of the corresponding element disclosed in the specification being examined
whether there are insubstantial differences between the prior art element and the structure, material or acts disclosed in the specification

the applicant has the opportunity during proceedings before the Office to amend the claims so that the claimed invention meets all the statutory criteria for patentability

2186 Relationship to the doctrine of equivalents
the doctrine of equivalents arises in the context of an infringement action

if an accused product or process does not literally infringe a patented invention, the accused product or process may be found to infringe under the doctrine of equivalents

all words in a claim must be considered in judging the patentability of a claim against the prior art

the doctrine of equivalents operates to expand claim coverage beyond the literal scope of claim language

 

Prior Art Rejections

2121 Prior art; general level of operability required to make a prima facie case
Enabling references are those that serve as prior art references for the subject matter claimed in an application. An enabling disclosure is one which provides the public with the invention prior to the application. If any of the prior art associated with an application has an enabling disclosure of the applicants subject matter, that application will be rejected.

enabling references:
the level of disclosure required within a reference to make it an "enabling disclosure" is the same no matter what type of prior art is at issue
it does not matter whether the prior art reference is a U.S. patent, a foreign patent, a printed publication or other form
a reference contains an enabling disclosure if the public was in possession of the claimed invention before the date of the invention

a nonenabling reference may qualify as prior art for the purposes of determining obviousness under 35 U.S.C. 103

inoperability can be shown even when a prior art reference merely discloses the structure of the claimed compound and evidence shows that attempts to prepare that compound were unsuccessful before the date of invention

when the claims are drawn to plants, the reference, combined with knowledge in the
prior art, must enable one of ordinary skill in the art to reproduce the plant:
color pictures of claimed roses did not place the rose in the public domain
would have needed to include information on the grafting process seeds sold more than 1 year ago would be classified as an enabled disclosure as someone could just plant them and they would presumably grow

an enabling drawing or picture may be used to reject claims to the article, however, the picture must show all the claimed structural features and how they are put together

in order to constitute anticipatory prior art, a reference must identically disclose the claimed compound, but no utility needs to be disclosed by the reference

the use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned, they are part of the literature of the art, relevant for all they contain

a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to a different product for the same use

in certain circumstances, references cited to show a universal fact need not be available as prior art before the applicant's filing date

references that do not qualify as prior art because they postdate the claimed invention may be relied upon to show the level of ordinary skill in the art at or around the time the invention was made
all the claimed structural features and how they are put together must be shown

the level of disclosure required within a reference to make it an "enabling disclosure" is the same no matter what type of prior art is at issue, it does not matter whether a prior art reference is a U.S. patent, a foreign patent, a printed publication or other

in determining that quantum of prior art disclosure which is necessary to declare an applicant's invention "not novel" or "anticipated" within section 102, the stated test is whether a reference contains an "enabling disclosure"

'Prima facie:
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.

products of identical chemical composition cannot have mutually exclusive properties

if the prior art teaches the identical chemical structure, the properties that the applicant discloses and/or claims are necessarily present in the prior art

the discovery of a new use for an old structure based on unknown properties of the structure might be patentable to the discoverer as a method for using the product

the determination of patentability is based upon the product itself

an application may fail to overcome a prima facie case of anticipation because the declaration did not specify the dimensions

when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a productby process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable (these sections are discussed later in this chapter)

the manner of operating the device does not differentiate the apparatus as claimed from the prior art

a prior art device can perform all the functions of the claimed apparatus and still not anticipate the claim, for example:
a disposable diaper having three fastening elements, while a reference disclosing a diaper with two fastening elements performing the same function is classified as different and does not anticipate the claim

the inclusion of material or an article worked upon by a structure being claimed does not impart patentability to the claims

to support a rejection under 35 U.S.C. 103, the collective teachings of the prior art must have suggested to one of ordinary skill in the art that, at the time the invention was made, the applicant's claimed invention would have been obvious

Filing dates of references used in prior art rejections:
This section discusses rejections based on the prior art. The claim must be anticipated by the reference. The reference must teach every aspect of the claimed invention either explicitly or impliedly.

Effective filing date of US. applications.

Application Type	Filing date
Continuing or divisional of an earlier U.S. application	Same as the earliest filing date in the line of continuing or divisionals.
Continuing or divisional of an earlier international application	Same as the earliest filing date in the line of continuing or divisionals.
CIP or earlier U.S. or international application	New claims in the CIP have the filing date of the new application. Claims supported by the earlier parent application will receive the same filing date as the earlier application.
Applications claiming foreign priority	Same as the filing date of the U.S. application (the filing date of the foreign priority document is not the effective filing date, although the foreign filing date may be used to overcome certain applications.
Application claiming priority to a provisional application	The filing date of the provisional application.

for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention, either explicitly or impliedly

a prima facie case of obviousness is not necessary in a rejection under 35 U.S.C. 102

Rejections under 35 U.S.C. 102:
There are several reasons why a patent application may be rejected. 35 U.S.C. 102 may be used by an examiner to reject patent applications when the material was already known, used, sold or described in a publication. It also may be used for rejections when the material was previously abandoned, or if the applicant did not actually invent the subject matter.

multiple references in 35 U.S.C. 102 rejections are only allowed to:
prove that the primary reference contains an enabling disclosure explain the meaning of a term used in the primary reference show that a characteristic not disclosed in the reference is inherent

it is possible to make a 35 U.S.C. 102 rejection even if the reference does not itself teach one of ordinary skill how to practice the invention, i.e., how to make or use the disclosed article

in disputing 35 U.S.C. 102 rejections, it is inappropriate to use:
secondary considerations
nonanalogous art or art that teaches away from the invention or is not recognized as solving the problem solved by the claimed invention

a prima facie case of obviousness is not necessary in a rejection under 35 U.S.C. 102

under 35 U.S.C. 102, a claim will be prevented from being patented due to:
prior publication anywhere in the world
a prior patent anywhere in the world
abandonment of invention
prior sale or an offer for sale in the United States
prior use in the United States
prior public or general knowledge in the United States
prior invention in the United States

706 Rejection of claims
Rejection on prior art

The most common grounds for a rejection is on the ground of unpatentability in view of the prior art. Both 35 U.S.C. 102 and 103 are conditions for patentability based on prior art. 35 U.S.C. 102 focuses on the novelty and loss of right to a patent while 35 U.S.C. 103 refers to nonobvious subject matter.

For rejections under 102, the claim is anticipated by the reference. There is no question of obviousness. Every aspect of the claimed invention must be taught either explicitly or impliedly.

Under 103, the references must be modified in order to meet the claims. The modification must be one that would be obvious to people with ordinary skill in the art at the time the invention was made.

In the next section, we will discuss each of the seven subsections of 35 U. S. C. 102. We will cover 102 (a), (b), (c), (d), (e), 0), and (g).

35 U.S.C. 102(a)
35 U.S.C. 102(a) applies when the reference has a publication date earlier than the effective filing date of the application and it is not the applicant's own work.

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

What is it?
a person shall be entitled to a patent unless:
there was "activity by another before the invention by the applicant"
the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention by the applicant
there is no time limit; if the prior art was present before the application, it serves as a statutory bar

prior art under U.S.C. 102(a) includes:
a patent for the same subject matter obtained anywhere in the world
public knowledge within the U.S.
a publication anywhere in the world
use by others in the U.S.
sale of the invention

102(a) asks if:
the invention was used in the U.S.
it was printed anywhere or patented anywhere in the world

for the purpose of anticipation predicated upon prior knowledge under 35 U.S.C. 102(a), declassified material may be taken as prima facie evidence of such prior knowledge as of its printing date even though such material was classified at that time

How to overcome it:
one option is for the reference to not claim the same patentable subject matter as the rejected invention
an important feature of the invention disclosed in the application must be different than the referenced invention in order for this to be possible

a rejection based on 35 U.S.C. 102(a) can be overcome by:
1 perfecting a claim to priority under 35 U.S.C. 119(a)(d)
in this case, the applicant(s) would attempt to claim the reference patent over their own
2 amending the claims to be patentably distinguishable over the prior art
3 persuasively arguing that the claims are patentably distinguishable from the prior art
4 filing an affidavit under 37 C.F.R. 1.132 showing that the referenced invention is not by "another"
in other words, the referenced invention is by the same inventor(s) as the invention in the current application
5 filing an affidavit under 37 C.F.R. 1.131 to "swear back" a U.S. patent which substantially shows or describes, but does not claim the same patentable invention as the rejected invention
this is not an option when the claims of the reference U.S. patent or U.S. patent app. publication and the application being examined are directed to the same invention or are obvious variants

2132 35 U.S.C. 102(a)
known or used:
"known or used" does not refer to:
the secret use of a process by another
if an examination of the product will not reveal the process, it cannot support a 35 U.S.C. 102(a) rejection

the knowledge must be used in this country:
prior knowledge that is not present in the U.S. (knowledge in a foreign country, does not count in a rejection under 35 U.S.C. 102(a)
however, if it is patented or described in a printed publication in this or a foreign country prior to the application, it will serve as a basis for a rejection under 102(a)

by others:
others refers to any entity different from the inventive entity
the inventive entity is different even if only one person is left off or added

by same.
a reference authored by the same applicant and published less than one year prior to the filing of the application is never prior art under 102(a)
public use derived from the inventor's own work cannot be used against the inventor under 35 U.S.C. 102(a)

an applicant's disclosure of his or her own work within the year before the filing of the application cannot be used against him or her under 102(a)

35 U.S.C. 102(b):
If the publication or issue date of the reference is more than one year prior to the
effective filing date of the application, the reference qualifies as prior art under 35 U.S.C. 102(b).

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

What is it?
when there was "activity more than one year prior to filing the application"
102(b):
asks if the invention was public or patented anywhere else in the world
asks if it was on sale in this country, or in public use
the invention was patented or described in a printed publication in this or a foreign country or was in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States

35 U.S.C. 102(b) basically states that an invention filed more than one year ago in another country cannot ever be filed in the United States
if a patent claims the same invention as an application and its issue date is one year or more prior to the presentation of claims to that invention in the application, a rejection of claims of the application under 35 U.S.C. 135(b) is made (see Interference section MPEP 2300)

Rules for applying 102(b):
the policies for the public use rule of 35 U.S.C. 102(b) were enacted in order to:
discourage the removal, from the public domain, of inventions that the public has come to believe are freely available
favor the prompt and widespread disclosure of the invented subject matter
in regards to public use, the use must be in the U.S.
public use in Canada is not a statutory bar under 35 U.S.C. 102(b), regardless of whether Canada is a NAFTA country

the specifics of on sale include that:
an offer does not have to be completed in order to be considered a sale an offer may be private to be considered a sale
the offer must be made in the U.S.; foreign sales do not count

How to overcome it:
rejections due to an existing publication or patent under 35 U.S.C. 102(b) may be overcome by:
1 persuasively arguing that the claims are patentably distinguishable from the prior art
2 amending the claims to be patentably distinguishable from the prior art
3 perfecting the priority:
by amending the specification of the application to contain a specific reference to a prior application
by filing an application data sheet containing specific references to a prior application

where the applicant is attempting to overcome a rejection under 35 U.S.C. 102(b) by perfecting a priority claim under 35 U.S.C. 119(e), there has to be at least one intermediate application between the provisional and the nonprovisional application under examination
this is due to the fact that a provisional application could not have been filed more than one year prior to the filing of a nonprovisional application that claims benefit to the provisional application

2133 35 U.S.C. 102(b)
What creates a statutory bar?
even if the inventor discloses his or her own work more than 1 year before the filing of the patent application, the inventor is barred from obtaining a patent on that work
the one year time bar is measured from the U.S. filing date

to qualify as prior art under 35 U.S.C. 102(b), the use of the invention must be in this country
if used or on sale in any other country, a rejection under 102(b) is not possible

sales in a foreign country more than one year prior to the effective U.S. filing date do not create a statutory bar
a foreign patent or publication printed more than one year before the filing date of the application serves as a bar whether or not the attempt to claim priority occurred
an invention sold in the U.S. more than one year prior to the effective U.S. filing date will be a statutory bar, even if the sales were merely attempts at market penetration market testing is not a proper exception to a statutory bar

a rejection of this type cannot be overcome by 37 C.F.R. 1.131, foreign priority dates or evidence that the applicant invented the subject matter

Public use:
the definition of "public use":
use by just one person constitutes public use
public knowledge is not necessarily public use
if the invention is displayed or sold, even if the invention itself is completely hidden from view, the article will bar the inventor from obtaining a patent
an inventor's private use of the invention for his or her own enjoyment is not a public use
public use occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor use by an independent third party is public use if it sufficiently informs the public of the invention or if a competitor could reasonably ascertain the invention

the public use bar:
discourages the removal, from the public domain, of inventions that the public has reasonably come to believe are freely available
favors the prompt and widespread disclosure of inventions
allows the inventor(s) a reasonable amount of time following sales activity to determine the potential economic value of a patent
prohibits the inventor(s) from commercially exploiting the invention for a period greater than the statutorily prescribed time
the presence or absence of a confidentiality agreement is not factored into the public use issue
the public use bar does not ever increase the economic value of a patent by extending the effective term of the patent

On sale:
the definition of "on sale ":
an impermissible sale occurred if there was a definite sale, or offer to sell, more than 1 year before the effective filing date of the U.S. application and the subject matter of the sale, or offer to sell, fully anticipated the claimed invention or would have rendered the claimed invention obvious by its addition to the prior art

the on sale bar does not generally apply where both manufacture and delivery occurred in a foreign country

however, offers for sale in this country may form a statutory bar even if the sale and delivery are in a foreign country

the sale of a device embodying a claimed process may trigger the on sale bar

the meaning of sale:
a contract between parties where the seller agrees to give and to pass the rights of the property in return for the buyer's payment or promise to pay the seller for things bought or sold
a conditional sale may bar a patent
a nonprofit sale may bar a patent
a single sale or single offer to sell may bar a patent
the buyer must be uncontrolled by the seller or offerer
there is no requirement that the onsale activity be public
an onsale bar does not require an actual sale
a bar can also be based on an offer to sell
an assignment or sale of the rights to an invention is not a sale of "the invention" that would operate as a bar to patentability

the difference between an "offer for sale" verses an "offer to sell the rights" is that:
an offer for sale is the actual product or invention
an offer to sell the rights is a license, not a sale of the product

the meaning of offers for sale:
a mere offer to sell is enough to bar a patent
delivery of the invention is not required, all that is needed is a signed purchase agreement
the date of the offer for sale is the effective date of the on sale activity

sale by inventor, assignee or others associated with the inventor in the course of business:
the sale activity need not be publicly made
a patent is barred even if the invention was placed on sale without the inventor's consent
objective evidence such as a description of the inventive product in the contract of sale is needed

sales by independent third parties:
sales or offers for sale by independent third parties will bar a patent
an exception is where a patented method is kept secret and remains secret after a sale of the unpatented product of the method
prior art publications can be used as evidence of sale before the critical date

The invention:
the invention requires a high level of completeness:
there is a two prong test to determine the level of completeness:
the product must be the subject of a commercial offer for sale the invention must be ready for patenting

ready for patenting:
may be satisfied by proof of reduction to practice before the critical date or proof that prior to the critical date, the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention
Experimental use:
experimental use does not bar a patent, however, experimentation must be the primary purpose and any commercial exploitation that results from it must be incidental

experimental use means the invention is still being perfected, it ends with an actual reduction to practice

experimentation will determine:
whether the utility is permissible market testing is not permissible

it is OK to do permitted experimental testing (i.e., that which is necessary for the invention to be reduced to practice)

factors indicating experimental purpose:
the testing is somewhat public
the testing is for a long period of time
the inventor controlled the testing
the inventor inspected the invention during the testing
the inventor retrieved experimental samples
the inventor disclosed to a user that the invention was unsatisfactory
a doctor conducted the testing on a patient

technical developmental testing is permitted and is not a bar under 35 U.S.C. 102(b), however, market testing is not permitted

Commercial exploitation:
commercial exploitation may be signaled by:
the preparation of various commercial documents
the preparation of price lists
a display of samples to prospective customers
a demonstration of models or prototypes
the use of an invention where an admission fee is charged
the advertising in publicity releases, brochures and various periodicals

commercial exploitation may have occurred even if: prices are estimated rather than established
no commercial production runs have been made
the invention is never actually sold

Commercial success:
evidence of commercial success is:
relevant to secondary considerations under 35 U.S.C. 103
may be used in order to indicate nonobviousness or utility not relevant to secondary considerations under 35 U.S.C. 102(a)

secondary considerations, such as commercial success are not application rejections under 35 U.S.C. 102(b)

the evidence of commercial success, which may be relevant for overcoming a rejection under 35 U.S.C. 103, cannot overcome a rejection under 35 U.S.C. 102

gross sale figures must be measured against a logical standard to determine whether or not there is commercial success:
brand name recognition is not a logical standard

a comparative basis for determining commercial success must be present, this could be:
evidence to market share
evidence to the time period during which the product was sold
evidence as to what sales would normally be expected in the market

Examples:

statutory bar:
an applicant's invention that was sold in Florida and Germany more than one year prior to the effective U.S. filing date regardless of whether the sales were attempts at market penetration

not a statutory bar:
an applicant's invention that was tested and experimented on more than 1 year prior to the effective U.S. filing date, but important modifications in the invention resulted from the experimentation causing the invention to be reduced to practice after the effective filing date
an applicant's invention sold in Germany more than one year before the effective U.S. filing date, even if the sales were merely market testing to determine product acceptance

The differences between 102(a) and (b):
the differences between 102(a) and 102(b):
102(a) relates to the invention date
102(b) relates to the filing date

rejections under 35 U.S.C. 102(a) or (b); regarding knowledge by others or public use or sale:
"in this country" means in the U.S. only, it does not include other WTO or NAFTA members
no rejection under 35 U.S.C. 102(a) should be made if there is evidence that the applicant made the invention and only disclosed it to others within the year prior to the effective filing date

both 35 U.S.C. 102 (a) and (b) may be applicable where the activity is by an entity other than the inventors or assignee, such as sale by another, manufacture by another or disclosure of the invention by applicant to another
if evidence only points to knowledge within the year prior to the effective filing date then only 35 U.S.C. 102(a) applies
there will be no rejection under 35 U.S.C. 102(a) if there is evidence that the applicant made the invention and only disclosed it to others within the year prior to the effective filing date
35 U.S.C. 102(b) is applicable only if the activity occurred more than one year prior to the effective filing date of the application

35 U.S.C. 102(c):
A person will be entitled to a patent unless he or she has abandoned the invention. The abandonment of the "invention" results in the loss of the right to obtain a patent.

35 U.S. C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless
(c) he has abandoned the invention, or

What is it?
where the "invention becomes abandoned"

if an invention is abandoned, it cannot be patented
for example, if 10 years pass by, an inventor cannot suddenly decide to file for a patent

2134 35 U.S.C. 102(c)
35 U.S.C. 102(c)
to qualify under 35 U.S.C. 102(c), the abandonment must be a deliberate surrender of patent rights:
however, it does not have to be expressly abandoned
it can be expressed or implied either by actions or inactions of the inventors
a delay in making the first application is not sufficient to determine abandonment

a delay in reapplying for a patent after the abandonment of previous application will not constitute abandonment

a mere lapse of time will not bar a patent:
the exception is when there is a priority contest under U.S.C. 102(g) and the applicant abandons, suppresses or conceals the invention

.35 U.S.C. 102(d):
A rejection under 35 U. S. C. 102(d) is proper if the invention was first patented more than
12 months before the filing of the application in the U.S.

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless
(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States

What is it?
35 U.S.C. 102(d) establishes four conditions, that if all are met, provides a statutory bar against the granting of a patent in this country:
1 the foreign application must be filed more than 12 months before the effective filing date of the U.S. application
continuationinpart breaks the chain of priority
2 the foreign and U.S. applications must be filed by the same applicant, his or her legal representative or assigns
3 the foreign application must have actually issued as a patent or an inventor's certificate
it need not be published, but the patent rights granted must be enforceable
this applies as of a grant date even if there is a period of secrecy after the patent grant
4 the same invention must be involved
this counts if the applicant's foreign application supports the subject matter of U.S. claims

prior art is not established by acts in other countries (for example; sales or marketing), but previous patenting in other countries may act as a statutory bar

according to 102(d), an applicant cannot file an application in the U.S. for a patent that he or she was issued a patent for in another country more than a year prior to the filing of the U.S. application

35 U.S.C. 102(e):
35 U.S.C. 102(e) is mostly utilized when the publication or issue date of the reference is too recent for the reference to be applied under 35 U.S. C. 102(a) or (b). It allows for certain prior art (U. S. patents, U.S. patent application publications and WIPO
publications of international applications)to be applied against the claims as of its effective US date.

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
(e) the invention was described in
(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or
(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

What is it?
35 U.S.C. 102(e):
(1) is used for publications of patent applications
(2) is for U.S. patents
where the "patent was filed by another with an earlier filing date"

revised 35 U.S.C. 102(e) applies to the examination of all applications, whenever filed and the examination of, or other proceedings to contest, all patents
the revised statute provision supercedes all previous versions of 35 U.S.C. 102(e) with only one exception, which is when the potential reference is based on an international application filed prior to November 29, 2000
the filing date of the application being examined is no longer relevant in determining what version of 102(e) to apply in determining the patentability of that application or the patent resulting from that application

the reference may use an international filing date or an earlier U.S. filing date for which priority or benefit is properly claimed

to qualify under 35 U.S.C. 102(e), the inventive entity of the application must be different from the reference
only one inventor need be different

under 102(e), an international filing date on or after November 29, 2000 may be used as the U.S. filing date if the international application:
designated the U.S.
was published by the WIPO under PCT Article 21(2)
is in English

publications of international applications filed before November 29, 2000 do not have a 35 U.S.C. 102(e) date at all
however, such publications are available as prior art under 35 U.S.C. 102(a) or (b) as of the publication date

Outline for applying references under 35 U.S.C. 102(e):
A) In order to qualify, the reference must be a:
U.S. patent
U.S. application publication
WIPO publication of an international application
B) If the reference meets one of the conditions above, next determine if the potential
reference resulted from or claims the benefit of an international application:
if it does NOT, the 35 U.S.C. 102(e) date of reference is the earliest effective
U.S. filing date taking into consideration any proper benefit claims to prior U.S.
applications under 35 U.S.C. 119(e) or 120
if it does, determine if the international application meets the following three conditions:
it has an international filing date on or after November 29, 2000 it designates the U.S.
it was published under PCT Article 21(2) in English
C) If the reference meets the three conditions above, the international filing date is a U.S. filing date for prior art purposes under 35 U.S.C. 102(e)

Further guidelines:

where the 35 U.S.C. 102(e) date of reference is based on the filing date of an earlier filed U.S. provisional, nonprovisional or international application, the subject matter used in the rejection must be disclosed in the earlier filed application in compliance with 35 U.S.C. 112, 1S` paragraph, in order for that subject matter to be entitled to the earlier filing date under 102(e)

if the international application was filed on or after November 29, 2000, but didn't designate the U.S. or was not published in English under PCT Article 21(2), the international filing date is NOT treated as a U.S. filing date
however, the reference may be applied under 102 (a) or (b) as of its
publication date or 102(e) as of any later U.S. filing date of an application
that properly claimed the benefit of the international application

if the international application has an international filing date prior to November 29, 2000, the reference may be applied under the provisions of 35 U.S.C. 102 prior to the American Inventors Protection Act (AIPA) changes:

for U.S. patents:
apply the reference under 102(e) as of the earlier of completion or the filing date of the later filed U.S. application that claimed the benefit of the international application

for U.S. application publications and WIPO publications resulting from an international application:
do not apply the reference under 35 U.S.C. 102(e), they may be applied as of their publication dates under (a) or (b)

for U.S. application publications of applications that claim the benefit of an international application filed prior to November 29, 2000:
apply the reference under 102(e) as of the actual filing date of the
later filed U.S. application that claimed the benefit of the
international application

although a publication of, or a U.S. patent issued from, an international application may not have a 35 U.S.C. 102(e) date at all, or may have a 102(e) date that is after the effective filing date of the application being examined (so it is not "prior art"), the corresponding WIPO publication may have an earlier 102(a) or (b) date

foreign applications filing dates that are claimed in an application which has been published as a U.S. or WIPO application publication or patented in the U.S., may not be used as 102(e) dates for prior art purposes

How to overcome:
overcoming a rejection based on a printed publication or patent under 35 U.S.C. 102(e) may be possible by:
1 persuasively argue that the claims are patentably distinguishable from the prior art
2 amending the claims to be patentably distinguishably over the prior art
3 filing an affidavit or declaration under 37 C.F.R. 1.132 showing that the referenced invention is not by "another"
4 file an affidavit or declaration under 37 C.F.R. 1.131 (called swearing back) showing prior invention, if the reference is not a U.S. patent or a U.S. patent application publication claiming the same patentable invention
when the claims of the reference U.S. patent or U.S. patent application publication and the application are directed to the same invention or are obvious variants, 37 C.F.R. 1.131 is not acceptable
5 perfect a claim to priority under 35 U.S.C. 119(a)(d)
6 perfect priority under 35 U.S.C. 119(e) or 120

when a reference used in a 102(e) rejection is a copending U.S. patent application and the copending application discloses subject matter that is similar to the pending U.S. application:
if at least one common inventor exists between the applications and the filing dates are different, the later application will be rejected
the rejection can be overcome by abandoning the applications and filing a new application containing the subject matter of both
the subject matter of the copending applications may be combined into a single application that claims the benefit of the prior applications (the previous copending applications must be abandoned)
file an affidavit or declaration showing that the date of the invention is prior to the effective U.S. filing date of the copending application
file a continuation application showing that the prior art and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person

Provisional rejections under 102(e):
A provisional rejection is one which may or may not be appropriate, depending on what eventually happens with the prior art. In this provisional rejection, a 102(e) rejection will be appropriate if the prior art becomes published or patented in the future.

an earlier, copending, unpublished U.S. application that discloses the same subject matter in a later filed U.S. application with a different inventive entity may be provisionally rejected under 102(e) if the earlier filed, pending application has been published as redacted and the subject matter relied upon in the rejection is not supported in the redacted publication of the application

Copending applications with or without common inventors:
if at least one common inventor exists between the application or the applications are commonly assigned and the filing dates are different, a provisional rejection of the later may be made
the provisional rejection will be appropriate if the earlier filed application is published or becomes a patent
since the earlier filed application is not published at the time of the rejection, the rejection must be provisionally made under 102(e)

a provisional rejection under 102(e) may be overcome in the same manner that a regular 102(e) rejection may be overcome:
in addition, it may also be overcome by abandoning the applications and filing a new application containing the subject matter of both

no rejection may be made if no common assignee or common inventor exists and the previously filed application was not published
the confidential status must be maintained
subject matter not supported in a redacted publication may not count as prior art under 102(e)

2136 35 U.S.C. 102(e)
the 35 U.S.C. 102(e) reference date is the filing date, not the date of the inventor's conception or reduction to practice
it is limited to certain references filed in the U.S. before the invention thereof by the applicant
claiming individual elements or subcombinations in a combination claim of the reference does not itself establish that the patentee invented those elements
it must claim everything, both the subcombinations and the combinations

by another:
the meaning of by another is "a different inventive entity", even if some of the inventors are common
the inventive entity is different unless all of the inventors are the same

a U.S. patent by a different inventive entity is prima facie evidence that the invention was made "by another" as used in 102(e) regardless of whether or not some of the inventors are the same

figure out what the 35 U.S.C. 102(e) filing date is for each of the following scenarios
the 102(e)(1) date relates to the date used for any subsequent publications that may arise from the given example
the 102(e)(2) date relates to the date used for any patents that may issue from the given example

Question 1:
For a reference based on a regular U.S. application filed with no claims for benefit or priority:
What is the 102(e)(1) date?
The date the regular U.S. application was filed.
What is the 102(e)(2) date?
The date the regular U.S. application was filed.

Question 2:
For a reference based on a regular U.S. application with a priority/benefit claim under 35 U.S.C. 119(e) or 120 to a prior U.S. provisional or nonprovisional application:
What is the 102(e)(1) date?
The date the first U.S. provisional or nonprovisional application was filed.
What is the 102(e)(2) date?
The date the first U.S. provisional or nonprovisional application was filed.

the date is just the first filing date for the chain of applications when a domestic priority claim is made

Question 3:
For a reference based on a regular U.S. application with a priority/benefit claim under 35
U.S.C. 119(a)(d) to a prior foreign application:
What is the 102(e)(1) date?
The date the regular U.S. application was filed.
What is the 102(e)(2) date?
The date the regular U.S. application was filed.

the date of the foreign application does not count under 102(e), just the date of the first regular U.S. application.

Now let's move on to the international applications instead of regular US. applications

Question 4:
For a reference based on the national stage of an international application if filed on or after November 29, 2000, designates the U.S. and is published in English under PCT Article 21(2):
What is the 102(e)(1) date for an international application by WIPO?
The filing date of the international application.
What is the 102(e)(1) date for a publication by the USPTO?
The filing date of the international application.
What is the 102(e)(2) date for a patent?
The filing date of the international application.

Question 5:
For a reference based on the national stage of an international application if filed on or after November 29, 2000, designates the U.S. but not published in English under PCT Article 21(2):
What is the 102(e)(1) date for an international application by WIPO?
There is none.
What is the 102(e)(1) date for a publication by the USPTO?
There is none.
What is the 102(e)(2) date for a patent?
There is none.

although it cannot be applied under 102(e), the international publication by WIPO can be applied under 102(a) and (b) as of its publication dat

Question 6:
For a reference based on the national stage of an international application if filed prior to November 29, 2000, designating the U.S. and published in any language under PCT Article 21(2):
What is the 102(e)(1) date for an international publication by WIPO?
There is none.
What is the 102(e)(1) date for a publication by the USPTO?
There is none.
What is the 102(e)(2) date for a patent?
The filing date of the international application.

once again, the international publication by WIPO can be applied under 102(a) and (b) as of its publication date

Question 7:
For a reference based on a regular U.S. application that is a continuation of an international application filed on or after November 29, 2000, designating the U.S. and published in English under PCT Article 21(2):
What is the 102(e)(1) date for an international publication by WIPO?
The filing date of the international application.
What is the 102(e)(1) date for a publication by the USPTO?
The filing date of the international application.
What is the 102(e)(2) date for a patent?
The filing date of the international application.

Question 8:
For a reference based on a regular U.S. application that is a continuation of an international application filed on or after November 29, 2000, but not published in English under PCT Article 21(2):
What is the 102(e)(l) date for an international publication by WIPO?
There is none.
What is the 102(e)(1) date for a publication by the USPTO?
The filing date of the regular U.S. application that claims the benefit of the international application.
What is the 102(e)(2) date for a patent?
The filing date of the regular U.S. application that claims the benefit of the international application.

Question 9:
For a reference based on a regular U.S. application that is a continuation of an international application filed prior to November 29, 2000, published in any language:
What is the 102(e)(l) date for an international publication by WIPO?
There is none.
What is the 102(e)(l) date for a publication by the USPTO?
The filing date of the regular U.S. application that claims the benefit of the international application.
What is the 102(e)(2) date for a patent?
The filing date of the regular U.S. application that claims the benefit of the international application.

35 U.S.C. 102(f):
This rule bars an applicant from attempting to patent subject matter that he or she did not invent.

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent. A person shall be entitled to a patent unless (f) he did not himself invent the subject matter sought to be patented, or

What is it?
when the "applicant is not the inventor"

even if just some of the inventors are left out, this rule will bar a patent

the listed inventors must be exactly those who invented the actual work
for example; if A,B and C invented something, and only A and B are listed on the application, the application is invalid since C should also be listed

2137 35 U.S.C. 102(f)
35 U.S.C. 102(f)
102(f) is used in cases where the applicant derived the invention from another inventor

the mere fact that a claim recites the use of various compositions, each of which can be assumed to be old, does not provide a proper basis for a 102(f) rejection

102(f) does not require inquiry into the dates of reference; it may be applicable where (a) and (e) are not available for references having an effective date subject to the effective date of the application being examined

where it can be shown that an application has "derived" an invention from another, a rejection under 35 U.S.C. 102(f) is proper

there is no inquiry into the relative dates of a reference when a rejection under 102(f) is made

Inventorship:
the inventor is the individual who conceived of the invention

the inventor may adopt ideas from many different sources the inventor does not have to be personally involved in carrying out the process steps

an application is rejected by 102(f) if all of the contributing inventors are not listed on the application

if the applicant is not the inventor, he or she is not entitled to a patent

Examples:
a joint application by inventors Joy and Jill contains different inventive entities than an application filed by Jill only:

the presence of a common inventor in a reference patent and application does not preclude determination that the inventive entity in reference is to another within meaning of 35 U.S.C. 102(e)
the mere fact that inventive entities differ does not necessarily cause the patent to necessarily be prior art

one must contribute to the conception of the invention in order to qualify as an inventor an inventor may consider and adopt suggestions from many sources

there is no requirement that an inventor be the one to reduce the invention to practice so long as the reduction to practice was done on his or her behalf

35 U.S.C. 102(g):
102(g) bars the issuance of a patent where another made the invention in the U.S. and did not abandon, suppress or conceal it.
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
A person shall be entitled to a patent unless
(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person's invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or
(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.

What is it?
37 C.F.R. 102(g) is the basis for interference practice in the U.S.
(g)(1)
may be used when a question regarding the priority of the invention is discovered during the course of an interference
someone else invented the same thing before the applicant; and it was not abandoned, suppressed or concealed
(g)(2)
the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it
the three critical components of 102(g) are that:
the prior invention must have been made in the U.S.
the prior invention must not have been abandoned, suppressed, or concealed
a partial exception is made for commonly owned inventions

2138 35 U.S.C. 102(g)
a person will be entitled to a patent unless:
during the course of an interference, it is established that another inventor made the invention first and did not abandon, suppress or conceal it
another inventor made the invention first in this country and did not abandon, suppress or conceal it

102(g):
only applies when another inventor has not abandoned, suppressed or concealed the invention
relates to issues such as conception, reduction to practice and diligence, and interference matters
is the basis of interference practice for determining the priority of the invention between two parties

interference practice:
an inter partes proceeding for determining the first to invent among the parties to a proceeding involving two or more pending applications naming different inventors or one or more pending applications and one or more unexpired patents naming different inventors

the U.S. has a first to invent rather than a first to file system:
the interference is held to try to determine which party was the first to invent the invention
the first to conceive the invention and constructively reduce it to practice will be the sole party obtaining the patent

37 C.F.R. 1.131 does not apply in interference proceedings

subject matter under 35 U.S.C. 102(g) is available only if made in this country
if the invention is reduced to practice in a foreign country and knowledge of the invention was brought into this country and disclosed to others, the inventor can derive no benefit from the work done abroad and such knowledge is merely evidence of the conception of the invention
the applicant can establish a date of invention in a NAFTA member country or a WTO member country

Suppression and concealment:
suppression or concealment need not be attributed to the inventor

the inference of suppression or concealment may be rebutted by showing activity directed to perfecting the invention, preparing the application or preparing other compounds within the scope of the generic invention

a finding of suppression or concealment may be rebutted by showing activity directed to perfecting the invention, preparing the application or preparing other compounds within the scope of the generic invention

a finding of suppression or concealment may not amount to a finding or abandonment wherein a right to a patent was lost

Conception and reduction to practice:
conception is:
the complete performance of the mental part of the inventive act
the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice

the manner of the invention, whether it be by accident or by painstaking research of a new use is without significance

reduction to practice is:
established when the invention is made sufficiently clear to enable one skilled in the art to reduce it to practice without the exercise of extensive experimentation or the exercise of inventive skill
there must be a recognition and appreciation of the invention

a reduction to practice can be done by another on behalf of the inventor

for example, a process is reduced to actual practice when it is successfully performed

reduction to practice:
process when it is successfully performed
machine when it is assembled, adjusted and used
manufacture when it is completely manufactured composition of matter when it is completely composed
3D design article with design
must be more than just a drawing

the invention's utility must be known at the time of the reduction to practice

there must be enough of a sufficient testing to demonstrate that the invention will work for its intended purpose, it does not have to be in a commercially satisfactory stage

the difference between constructive and actual reduction to practice:
constructive reduction of practice is the date of the filing at the PTO
actual reduction to practice is the date it can be proven that the invention was sufficiently tested to its intended purpose

the same evidence sufficient to establish a constructive reduction to practice is not necessarily sufficient to establish an actual reduction to practice which requires a showing of the invention in a physical or tangible form containing every element of the count

in an interference proceeding, two factors must be fulfilled to establish an actual reduction to practice:
the party constructed an embodiment or performed a process that met every element of the interference count
the embodiment or process operated for its intended purpose

Simultaneous inventions:
nearly simultaneous inventions:
may be a factor in making obviousness determination, but may not in itself preclude patentability
may be evidence of the level of skill in the art at the time of the invention bears on neither longfelt need nor commercial success

Diligence:
reasonable diligence must only be shown between the date of the actual reduction of practice and the public disclosure to avoid the inference of abandonment
the applicant must not suppress, abandon or conceal the invention at any time

diligence is required in the preparation and filing of the patent application

diligence must be established from the time when the other inventor conceived of the idea and the first inventor actually reduced it to practice

the length of time taken to file a patent application after an actual reduction to practice is generally of no consequence except in an interference proceeding

diligence does not require an inventor or attorney to drop all other work and concentrate on the particular invention involved

the diligence of a practitioner in filing an application is only a benefit

Obviousness:
the invention as a whole must be considered to determine obviousness

factors to consider in determining the level of ordinary skill in the art required for practicing the subject matter include the:
educational level of the inventor
type of problems encountered in the art
prior art solutions to those problems
the rapidity with which innovations are made
sophistication of the technology
educational level of the active workers in the field

Prior Art
Exactly what counts as prior art for any given 102 law has been debated and debated and debated. Here are a few finalized details.

2126 Availability of a document as a patent for purposes or rejection under 35 U.S.C. 102(a), (b), and (d)
102(a) and (b):
what a foreign country designates to be a patent may not be a patent for the purposes of a rejection under 35 U.S.C. 102(a) and (b); it is the substance of the rights conferred and the way the information within the patent is controlled that determines whether or not it is a patent
for example, the date the sovereign formally bestows patents rights to the applicant is used as the reference date

even if a patent grants an exclusionary right (and it is enforceable), it is not available as prior art under 35 U.S.C. 102(a) or (b) if it is secret or private
the document must be at least minimally available to the public in order to count as prior art

the date the patent is made available to the public is the date it is available as a 35 U.S.C. 102(a) or (b) reference
the date the patent is available as a reference is generally the date that the patent becomes enforceable

Special publications:
since the Defensive Publication Program was removed from the rules in view of the applicant's ability to obtain an SIR, a defensive publication is not available as prior art

an application from which a defensive publication has been prepared may be used as a reference under 35 U.S.C. 102(a) effective only from the date of publication of the defensive application

Abandoned applications:
abbreviatures contain specific portions of the disclosures of abandoned applications:
these were discontinued in 1965
they may be cited as prior art only if used in combination with other prior art in rejected claims under 35 U.S.C. 102 and 35 U.S.C. 103

abstracts include a summary of the disclosure of an abandoned application:
the publication of such abstracts was discontinued in 1953
however, these publications may be cited as prior art alone or in combination with other prior art in rejected claims under 35 U.S.C. 102 and 35 U.S.C. 103.

Thesis:
a thesis available to the public may be used as a prior art document

in order to be used under 35 U.S.C. 102(b) as a prior art printed publication against a U.S. application, the publication thesis must be published more than 1 year before the application of the patent

Antedating:
a reference under 35 U.S.C. 102(b) cannot be antedated

102(d):
if an applicant has an invention that he or she filed for a patent more than a year ago in a foreign country and that patent application issued as a patent in the foreign country, the applicant is barred from filing in the U.S. after the issue date of the foreign patent
example 1:
if an applicant filed for patent in Germany on 6/23/98 and the patent issued on 10/1/99 in Germany, he or she cannot file for protection in the U.S. on 10/12/99
an applicant must have filed for protection in the U.S. before 10/1/99
example 2:
if an applicant filed for patent in Germany on 6/23/98 and the patent has not yet been issued in Germany, he or she can file for protection in the U.S. on 10/12/99 since the German patent has not yet been issued

a period of secrecy after granting the patent has been held to have no effect in connection with 35 U.S.C. 102(d), these patents are usable in rejections under 35 U.S.C. 102(d) as of the date patent rights are granted

2127 Domestic and foreign patent applications as prior art oCanceled matter or abandoned patents:
Abandoned patents:
an abandoned patent application may become evidence of prior art only when it has been appropriately disclosed, as, for example, when the abandoned patent (application) is referenced in the disclosure of another patent, in a publication or by voluntary disclosure under 37 C.F.R. 1.139

an abandoned patent application becomes available as prior art as of the date the public gains access to it

Canceled matter:
canceled matter in the application file of a U.S. patent cannot be relied upon in a rejection under 35 U.S.C. 102(e)

canceled matter only becomes available as prior art as of the date the application issues into a patent since this is the date the application file wrapper becomes available to the public

Printed publications:
printed publications include items that are provided in easily reproducible form

Publicly accessible:
while internal documents intended to be confidential are not "printed publications", there must be an existing policy of confidentiality or agreement to remain confidential within the organization; mere intent to remain confidential is insufficient
prior art disclosures on the Internet are thought of as publicly available once the item was posted
however, if there is no posting date, it cannot be relied upon as prior art, but it may be relied upon to provide evidence regarding the state of the art
one need not prove someone actually looked at a publication when that publication is publicly accessible
publicly displayed documents can constitute a "printed publication" even if they are only displayed for a few days and the documents are not disseminated by copies or indexed in a library or database

a printed publication has been made available when persons interested and ordinarily skilled in the subject matter or art, can locate it by exercising reasonable diligence
documents and items only distributed internally within an organization which are intended to remain confidential are not printed publications no matter how many copies are distributed

a doctoral thesis indexed and shelved in a library that is accessible to the public will count as a prior art printed publication even if access to the library is restricted
printed = probability of wide circulation

an orally presented paper will count as a printed publication if:
presented in a forum where all interested persons can come and written copies are given out
between 50 and 500 people attend and at least 6 copies are given out

Dating publicly accessible documents:
the date the publication is received by a member of the public is the date of publication, not the printing date or mailing date

evidence shown in routine business practices can be used to establish the date on which a publication became accessible to the public

a publication disseminated by mail is not prior art until it is received by at least one member of the public; a magazine or technical journal is effective as of its date of publication (the date when the first person receives it) not the date it was mailed or sent to the publisher

Admissions by inventor:
a reference will be considered prior art if the inventor says it is prior art, because admissions by the applicant are automatically treated as prior art
admitted prior art can be used in obviousness rejections

2131 Anticipation 'Specifics about claims:
prior art which teaches a value or range close to, but not overlapping or touching a claim range does not anticipate the claimed range

preamble elements in a Jepsontype claim are impliedly admitted to be old in the art, but it is only implied, therefore if an applicant explains that the Jepson format is being used to avoid a double patenting rejection over the applicant's own copending application, the implication that the preamble is admitted prior art may be overcome

the examiner may use any information provided in the specification relating to the subject matter of the patented claims when making a rejection under 35 U.S.C. 102(a), (b) or (d)
the identical invention must be shown in as complete detail as is contained in the claim

Anticipation of ranges:
a species will anticipate a claim to a genus and a rejection will be made:
if prior art discloses a species falling within the claimed genus, however, a genus does not always anticipate a claim to a species within the species
although if the species is named it will
a generic chemical formula will anticipate a claimed species covered by the formula when the claimed species would have been obvious from the generic formula

normally, only one reference should be used when making a 35 U.S.C. 102 rejection
extra references are appropriate when they are used to:
prove the primary reference contains an enabling disclosure
explain the meaning of a term used in the primary reference
may be used to explain, but not expand the meaning of terms and phrases used in the reference relied upon as anticipatory of the claimed subject matter
show that a characteristic not disclosed in the reference is inherent

a claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described in a single prior art reference

when a claim reciting ranges covers several compositions, the claim is anticipated if one of them is in the prior art
when a claim covers several structures or compositions; either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art
evidence of secondary considerations are irrelevant to 35 U.S.C. 102 rejections and cannot be used to overcome them
secondary considerations equal unexpected results or commercial success

if an individual of ordinary skill in the art is able to at once envisage the specific compound within the generic chemical formula, the compound is anticipated

when prior art touches or overlaps with the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination will be made

when a patent claims a composition in terms of the ranges of elements, any single prior art reference falling within each of the ranges anticipates the claim

if a prior art reference discloses the claimed invention, it will be anticipated even if it later disparages it
they often call this "teaching away" or "nonanalogous art"

Rejections under 35 U.S.C. 103
When the invention described in the application is not exactly the same invention as what is described in any prior art reference, but the invented subject matter in the application is obvious. Rejections under 35 U.S.C. 103 are appropriate if someone skilled in the art would consider the invention obvious over the prior art.

35 U.S.C. 103
35 U.S.C. 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 between 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 manner in which the invention was made.
(b) (1) Notwithstanding subsection (a), and upon timely election by the applicant for patent to
proceed under this subsection, a biotechnological process using or resulting in a composition
of matter that is novel under section 102 and nonobvious under subsection (a) of this section
shall be considered nonobvious if
(A) claims to the process and the composition of matter are contained in either the same application for patent or in separate applications having the same effective filing date; and
(B) the composition of matter, and the process at the time it was invented, were owned by the same person or subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)
(A) shall also contain the claims to the composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed in another patent, be set to expire on the same date as such other patent, notwithstanding section 154.
(3) For purposes of paragraph (1), the term "biotechnological process" means
(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to
(i) express an exogenous nucleotide sequence,
(ii) inhibit, eliminate, augment, or alter expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological characteristic not naturally associated with said organism;
(B) cell fusion procedures yielding a cell line that expresses a specific protein, such as a monoclonal antibody; and
(C) a method of using a product produced by a process defined by subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).
(1) Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the claimed invention was made, owned by the same person or subject to an obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter developed by another person and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person if -
(A) the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
(B) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
(C) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.
(3) For purposes of paragraph (2), the term "joint research agreement" means a written contract, grant, or cooperative agreement entered into by two or more persons or entities for the performance of experimental, developmental, or research work in the field of the claimed invention.

What is 103(a)?
patents are not obtainable if 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 the said subject matter pertains to

to establish a prima facie case of obviousness, three basic criteria must be met:
1 there must be some suggestion or motivation either in the reference or knowledge available to the public to modify the reference or to combine the reference teachings
2 there must a reasonable expectation of success
3 the reference must teach or suggest all the claim limitations
this may not be based on the application's disclosure, but the prior art itself

the following will serve as prior art:
the preamble of a Jepson claim
a technical journal as of its date of publication which is accessible to the public a doctoral thesis that is indexed, cataloged and shelved in a university library
an applicant's labeling of one of the figures in a drawing submitted with his or her application as prior art

disclosures on the internet without a publication or retrieval date are never prior art

How to overcome it:
overcoming a rejection based on 103(a):
persuasively argue that the claims are patentably distinguishable from the prior art
amend the claims to patentably distinguish over the prior art
file an affidavit or declaration under 37 C.F.R. 1.131 to "swear back" file an affidavit or declaration showing that the referenced invention is not by "another"
perfect a claim to priority under 35 U.S.C. 119(a)(d)
perfect priority by amending the specification of the application to contain a specific reference to a prior application

two arguments that can be made against an obviousness rejection are:
that a person skilled in the art would not see the combination suggested by the examiner as obvious
that the resulting combination is not the claimed invention
if two applications are claiming the same patentable invention, a terminal disclaimer and an affidavit or declaration under 37 C.F.R. 1.130 may be used to overcome a rejection under 35 U.S.C. 103 in a common ownership situation if the earlier filed application has matured into a patent

What is 103(b)?:
103(b) is only applicable to biotechnological processes. It precludes a rejection of process claims which involve the use or making of certain nonobvious biotechnology compositions of matter under 103(b).

requirements of biotechnology process applications and 35 U.S.C. 103(b): biotechnological processes and compositions of matter should be in the same application or in separate applications that have the same filing date
biotechnological processes and compositions of matter must be owned by the same person at the time the process was invented
a patent issued on a process must include the claims to the composition of matter involved with the process or if they are claimed in two different patents, they must expire at the same time

What is 103(c):
a. a reference used in an anticipatory rejection under 35 U.S.C. 102(e), (f), or (g) is not disqualified as prior art if evidence is provided to show that the reference is disqualified under 35 U.S.C. 103(c); such a reference is only disqualified when:
i. proper evidence is filed
ii. the reference only qualifies as prior art under 35 U.S.C. 102 (e), (f), or (g) -it cannot qualify as prior art under 102 (a) or (b)
iii. the reference was used in an obviousness rejection under 35 U.S.C. 103(a)
b. under the CREATE Act (Cooperative Research and Technology Enhancement Act of 2004), the subject matter developed by another person shall be treated as owned by the same person or subject to an obligation of assignment to the same person for purposes of determining obviousness if the following three conditions are met:
i. the claimed invention was made by or on behalf of parties to a joint research agreement that was in effect on or before the date the claimed invention was made;
ii. the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and
iii. the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement
b. Double patenting rejections:
i. if a reference is disqualified under the joint research agreement provision of 35 U.S.C. 103(c) and a new subsequent double patenting rejection based on the disqualified reference is applied, the next Office action which contains the new double patenting rejection may be made final even if the applicant did not amend the claims
ii. this is provided the examiner introduces no other new ground of rejection that was not necessitated by either amendment or an IDS filed during the time period set forth in 37 C.F.R. 1.97(c) with the proper fee
b. for a double patenting rejection based on a non-commonly owned patent under the CREATE Act, the double patenting rejection may be obviated by filing a terminal disclaimer
In order to be disqualified as prior art under 103(c), the subject matter which would otherwise be prior art to the claimed invention and the claimed invention itself must be commonly owned at the time the invention was made.

Establishing common ownership
definition of common ownership:
subject matter that would be considered prior art to the claimed invention except that the claimed invention and the prior art reference are owned by the same inventors
it is required that the ownership is 100%
if subject matter and the invention were not commonly owned, the subject matter would be considered prior art under 35 U.S.C. 103

Evidence required to establish common ownership:
the fact that the reference and the application have the same assignee is not, by itself, sufficient evidence to disqualify the prior art under 35 U.S.C. 103
there must be a statement that the common ownership was "at the time
the invention was made"

a statement that common ownership existed at the time the later invention was made
a statement of present common ownership is not enough, it must show that it existed at the time of the later invention
the nature of the showing may include:
a necessary showing of the assignments if the patents were sold
copies of unrecorded assignments as long as they convey the entire rights of the inventions
an affidavit or declaration filed by the common owner explaining there is common ownership between the two patents
other evidence (i.e., might include a court decision)

if the subject matter qualifies as prior art under any other subsection, it will not be disqualified as prior art under 35 U.S.C. 103:
if prior art under 35 U.S.C. 102(a) is found, then it cannot be disqualified by a showing of common ownership
common ownership can be used to disqualify prior art under 35 U.S.C. 102(f) and (g)

How to overcome complex rejections:
rejections under 35 U.S.C. 102(e)/103:
as of November 29, 1999, subject matter which was prior art under former statutes is now disqualified as prior art against the claimed invention if that subject matter and the claimed invention were owned by the same person at the time the invention was made
this change applies to utility, plant, designs and reissue applications
it does not apply to application files before November 29, 1999 or RCE's

provisional rejections under 35 U.S.C. 102(e)/103:
rejections applied to copending applications having different effective filing dates wherein each applies a common assignee or a common inventor

overcoming prior art rejections of this sort include:
arguing the patentability of the subject matter of the application over the earlier application
combining the subject matter of the copending applications into a single application claiming the benefit under 35 U.S.C. 120 of the prior applications and abandoning the copending applications

filing an affidavit or declaration under 37 C.F.R. 1.131 showing a date of invention prior to the effective U.S. filing date of the copending application
filing a continuation application on or after November 29, 1999 and showing that the prior art and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person

rejections under 35 U.S.C. 102(e)/103; 35 U.S.C. 103(c):
subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e) is now disqualified as prior art against the claimed invention if that subject matter and the claimed invention "were at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person"
35 U.S.C. 103(c) applies only to prior art usable in an obviousness rejection under 35 U.S.C. 103
subject matter that qualifies as anticipatory prior art under 35 U.S.C. 102, including 35 U.S.C. 102 (e), is not affected and may still be used to reject claims as being anticipated

2141 35 U.S.C. 103, the graham factual inquiries
an unsubstantiated argument by a practitioner that the applicant discovered the problem is insufficient to show that the applicant discovered the source of the problem

PTO classification is some evidence of analogy/nonanalogy, but structure and function carry more weight

obviousness cannot be predicated on what is not known at the time an invention is made, even if an inherency of a certain feature is later established

2142 Legal concept of prima facie obviousness
the applicant is under no obligation to submit evidence of nonobviousness unless the examiner meets his or her initial burden to fully establish a prima facie case of obviousness

2143 Basic requirements of a prima facie case of obviousness
establishing prima facie:
in order to establish a prima facie case of obviousness, there must be:
1. some suggestion or motivation to modify the reference or to combine the reference teachings:
sources for the motivation to combine the references include: the nature of the problem to be solved
the teachings of the prior art
the knowledge of persons of ordinary skill in the art
2. a reasonable expectation of success
3. a teaching or suggestion to make the claimed combination and the reasonable expectation of success must both be found in the prior art, and not based on the disclosure
whether an art is predictable or whether the proposed modification or combination of the prior art has a reasonable expectation of success is determined at the time the invention was made

a claim limitation which is considered indefinite cannot be disregarded

prima facie:
obviousness can only be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion or motivation to do so found either in references themselves or in the knowledge generally available to one of ordinary skill in the art
suggestions, teaching or motivation to modify or combine are not limited to being found only in the references

utility does not have to be the same:
it is not necessary in order to establish a prima facie case of obviousness that there be a suggestion or expectation from the prior art that the claimed invention will have the same or a similar utility as one newly discovered by the applicant

it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by the applicant

a suggestion to combine does not need to be for the same purpose as the applicant discloses in the application

2144 Sources of rationale supporting a rejection under 35 U.S.C. 103
the rationale may be in a reference, or from common knowledge in the art, scientific principles, art recognized equivalents, or a legal precedent

in considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom

to establish prima facie, all the claim limitations must be taught or suggested by the prior art

the rationale to support a rejection may rely upon:
logic and sound scientific principle
common knowledge in the art or wellknown prior art
rationale used by the court
factors that support obviousness:
1. aesthetic design changes:
matters relating to ornamentation only and have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art
2. elimination of a step or an element and its function:
this is obvious if the function of the element is not desired
however, omission of an element with retention of the element's function
indicates unobviousness
3. automating a manual activity
4. changes in size, shape, or sequence of adding ingredients
5. making object portable, integral, separable, adjustable or continuous, reversal, duplication, or rearrangement of parts
6. purifying an old product

obviousness of ranges:
when claimed ranges overlap or lie inside ranges disclosed by prior art, a prima facie case of obviousness exists
applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range

optimization of ranges:
differences in concentration or temperature will not support the patentability of subject matter incompassed by the prior art unless there is evidence indicating that such concentration or temperature is critical
a parameter must first be recognized as a resulteffective variable before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation

combining equivalents known for the same purpose:
it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose
objective evidence of nonobviousness must be commensurate in scope with the claims for which the evidence is offered to support

to make out a case of obviousness, one must:
determine the scope and contents of the prior art
ascertain the differences between the prior art and the claims in the application for issue
determine the level of skill in the pertinent art
evaluate any evidence of secondary considerations

it is not necessary in a prima facie case of obviousness for there to be a suggestion from the prior art that the claimed invention have the same or similar utility as one newly discovered by the applicant; it is not necessary that prior art suggest a combination to achieve the same result discovered by the applicant

prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention

a prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties

arguing economic infeasibility
the fact that a combination would not be made by businessmen for economic reasons does not mean that a person of ordinary skill in the art would not make the combination because of some technological incompatibility

traversing the statement:
an examiner's statement of common knowledge in the art is taken as admitted prior art, if the applicant does not seasonable traverse the well known statement during the examination
must do this before the statement is taken to be admitted prior art cannot do this at any time during prosecution
if the applicant rebuts an examiner's statement of common knowledge in the art in the next reply after the Office action in which the statement was made, the examiner can potentially make the next Office action final if he or she disagrees

it is proper to take official notice without citing a reference until the practitioner challenges the examiner to provide support
until seasonably challenged, the examiner would not have to provide support for the official notice

an applicant must seasonably traverse the wellknown statement (in a 35 U.S.C. 103 rejection) or the objective of the wellknown statement is taken to be admitted prior art

2145 Consideration of applicant's rebuttal arguments
a finding that a mere recognition of latent properties in the prior art does not render the known invention unobvious