# Presentation: 318167

## Patent Processing – Examination Issues

**Patent, Trademark, and Copyright - Law and Policy****5-8 November 2007**
**Amman, Jordan**
- Global Intellectual Property Academy
- Office of International Relations
- United States Patent and Trademark Office

## Patent Processing- Examination of Patent Applications 

- Brief Introduction to Important Patent Statutes
- Patent Process
- Claim Interpretation
- Ownership

**Notes:**
What is anticipation?  
§102(a)-(g)
§102 - Dates
Claim interpretation as it applies to §102 
Functional/Structural Limitations
Intended Use
“Stool” example
§112- 6th paragraph analysis
Why use 112, 6th paragraph?
Three-prong analysis 
Determine the scope of the invention
Ensure that the 112, 1st and 2nd requirements are met
Apply prior art
Carpenter’s Square example
Potato Chip Glaze Example

## Brief Introduction to Important  U.S. Statutes

## Patent Processing- Brief Introduction to Important Patent Statutes 

- 35 USC 101
- 35 USC 102
- 35 USC 103
- 35 USC 112
- 35 USC 119 and 120
- 35 USC 271(a)

**Notes:**
What is anticipation?  
§102(a)-(g)
§102 - Dates
Claim interpretation as it applies to §102 
Functional/Structural Limitations
Intended Use
“Stool” example
§112- 6th paragraph analysis
Why use 112, 6th paragraph?
Three-prong analysis 
Determine the scope of the invention
Ensure that the 112, 1st and 2nd requirements are met
Apply prior art
Carpenter’s Square example
Potato Chip Glaze Example

## Important Statutes:Eligibility Utility

- 35 U.S.C. 101:  “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”

## Important Statutes:Eligibility 

- Broad U.S. View of Patent Eligibility
- Congress intended scope to include “Anything Under the Sun Made by Man” – *Diamond v. Chakrabarty *(447 U.S. 303, 317)

## Important Statutes:Eligibility 	

- Exceptions
- The U.S. Supreme Court has identified three categories of subject matter that are not patentable:  (1) laws of nature, (2) natural phenomena, and             (3) abstract ideas

## Important Statutes:Eligibility	

- Business Methods
- In determining whether an invention is patent eligible, U.S. Courts look to whether the claimed invention “as a whole” has a practical application that produces a “useful, concrete and tangible result”

## Eligibility 	

- Biotechnology
- In order to be eligible for patenting, an invention must not be “natural phenomena”

## Eligibility

**Biotechnology**
**Diamond v. Chakrabarty (447 U.S. 303, 317)**
- The U.S. Supreme court determined that a claimed micro-organism qualifies as patentable subject matter because it was made by man and it was not naturally occurring

## Important Statutes: Utility

- Requires that an invention be considered useful, i.e., possess a specific, substantial, and credible utility
- Some credible utility must be associated with the claimed subject matter
- View of a person of ordinary skill in the art- e.g., prevention of aging
- Specific utility
- Specific for the claimed invention
- Substantial utility
- Real-world use

## Important Statutes: Utility

- Requires that an invention be considered useful, i.e., possess a specific, substantial, and credible utility
- Some credible utility must be associated with the claimed subject matter
- View of a person of ordinary skill in the art- e.g., prevention of aging
- Specific utility
- Specific for the claimed invention
- Substantial utility
- Real-world use

## Important Statutes: Written Description, 35 USC § 112

**35 U.S.C. 112 Specification (first paragraph)**
- “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.”
- Must show adequate description of the invention to prove possession of the invention at the time application was filed.
- Policy
- encourage disclosure of complete and accurate information

## Important Statutes: Enablement, 35 USC § 112

- Minimum amount that is required to teach those of  skill in the art how to make and use the invention without undue experimentation
- Undue experimentation: _Wands_ factors
- quantity of experimentation necessary
- amount of guidance presented
- nature of the invention
- breadth of claims
- level of predictability
- state of the prior art
- working examples
- level of skill in the art

## Important Statutes: Best Mode, 35 USC § 112

- Statutory requirement to disclose at the time the application is filed, the preferred method of practicing the invention

## Important Statutes: Clarity Requirement, 35 USC § 112, second para.

- The language of the claimed invention must be clear and unambiguous.
- Understandable language
- Relative terms

## Important Statutes: Right to an Earlier Filing Date, 35 USC §§ 119 and 120

**35 U.S.C. 119 Benefit of earlier filing date; right of priority.**
- 	(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed...

**Notes:**
Mention 120:
35 U.S.C. 120 Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89 Stat. 691; Nov. 8, 1984

## Important Statutes: Patent Right, 35 USC § 271(a)

**35 U.S.C. 271 Infringement of patent.**
- (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

## Patent Process

## Patent Process: Contents of a U.S. Patent Application

- A complete application comprises:
- (1) A specification as prescribed by 35 U.S.C. 112, including a claim or claims
- (2) An oath or declaration
- (3) Drawings, when necessary; and
- (4) The prescribed filing fee, search fee, examination fee, and application size fee.

## Patent Process: Contents of a U.S. Patent Application

- Applications also frequently contain:
- One or more priority documents;
- Sequence listings; and
- information disclosure statements

## The Patent Process

**Pre-Examination**
**Processing **
***(Office of Initial***
***Patent Examination)***

**Examination Processing**

**Post-Examination**
**Processing**
***(Office of Patent Publication)***

**The Patent Process**

**18 Month Publication **
**of Patent Application**

**Notes:**
Talk about what a patent is-
The right to exclude others from making, using or selling the patented invention

## Patent Process:Who may file a Patent Application?

- In the United States, an application for a patent is filed by the inventor(s); they are “the applicant(s).”
- The basis for this is found in:
-  Article 1, Section 8 of the U.S. Constitution:
- To Promote the Progress of Science...by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries
- 35 U.S.C. 101
- Whoever invents... may obtain a patent.

## Patent Process

- After passing national security screening and formalities review, the application is assigned to a patent examiner for examination on the merits
- Applicant is not required to separately request examination on the merits

## Patent Process:Examiner’s First Action

- Examiner studies application and searches prior art relating to subject matter claimed
- Reasons for any adverse action, objection, or requirement are stated in the action
- If claims properly define over the prior art and application is otherwise in order, first action may be allowance

## Patent Process:Claim Interpretation

## Patent Process:Claim Interpretation

- Is the careful consideration of
**each and every word**
- in a claim to determine what the claim covers

**Notes:**
Consider structural and functional limitations.
Consider the preamble and the body of the claim.

Give each word in a claim its plain meaning unless applicant has provided a clear definition in the specification for the word(s).  See MPEP 2111.01

## Patent Process:Claim Interpretation

- Give each word in a claim its broadest reasonable interpretation consistent with the specification

**Notes:**
See MPEP 2111: Claim Interpretation; Broadest Reasonable Interpretation
CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION
During patent examination, the pending claims must be “given *>their< broadest reasonable interpretation consistent with the specification.” > In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).< Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) 

## Patent Process: Claim Interpretation

- A claim must be interpreted in light of the specification **without** reading limitations into the claim.

**Notes:**
Liebel-Flarsheim Co. v. Medrad Inc., 69 USPQ2d 1801 (CA FC 2004): 
Claims should not be construed as limited to embodiments of invention having particular feature simply because all embodiments disclosed in specification share that feature, since, even if specification describes only single embodiment, claims will not be read restrictively unless patentee has demonstrated clear intention to limit claim scope using “words or expressions of manifest exclusion or restriction”
In re Bigio (Fed. Cir. August 24, 2004)
Absent claim language carrying a narrow meaning, the PTO should only limit the claim based on the specification or prosecution history when those sources expressly disclaim the broader definition.
Based on knowledge acquired from the specification, determine the category of the claimed subject matter and how the words in the claim limit the definition thereof.  
What elements/steps of the disclosed invention are being claimed and how broad or narrow each element/step is defined?
Based on knowledge acquired from the specification, the prior art, and your knowledge as one having a technical background, determine whether each word in the claim can be interpreted to encompass subject matter disclosed by the prior art
Determine if the prior art falls within the scope of the claimed subject matter.

## Patent Process: Claim Interpretation Structural and Functional Limitations

- Claims may have
- 	structural,  and/or
- 	functional limitations
- The prior art may disclose both kinds of limitations
- 	Expressly or explicitly
- 	Inherently or implicitly

**Notes:**
MPEP 2173.05(g)     Functional Limitations

MPEP 2163.07(a)     Inherent Function, Theory, or Advantage

A limitation is considered to be “expressly” or “explicitly” disclosed by a reference when the limitation is either described or shown in the figures.

A limitation is considered to be “inherently” or “implicitly” disclosed by a reference when the limitation is not described or shown in the figures, but must necessarily be present.

## Inherency/Implied Teachings

- Prior art reference inherently describes a claim’s limitation if

- the limitation “naturally flows” from the reference,
- i.e., it is necessarily, inevitably, or without question in the prior art reference (not possibly or probably)

**Notes:**
Benzene inherently has six carbon atoms, it inherently has a vapor pressure of 75 mmHg at 68 F.
Metal pipes are inherently hollow in order to convey fluids.  Computers inherently have processors.
     MPEP 2112. “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original)
     Inherent anticipation requires that the missing descriptive material is “necessarily present,” not merely probably or possibly present, in the prior art. In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999) (citing Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991)). Trintec Industries Inc. v. Top-U.S.A. Corp., 63 USPQ2d 1597, 1599 (CA FC 2002)  
     The difference between a printer and a photocopier may be minimal and obvious to those of skill in this art. Nevertheless, obviousness is not inherent anticipation. Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed. Cir. 1984) (“though anticipation is the epitome of obviousness, [they] are separate and distinct concepts”). Trintec Industries Inc. v. Top-U.S.A. Corp., 63 USPQ2d 1597, 1600 (CA FC 2002)  
Inherency is anticipation, it is not obviousness
 Use inherency argument in a 35 U.S.C. 102 rejection, not as a basis for a 35 U.S.C. 103 rejection. If the only difference between the prior art and the claimed invention is a feature that is considered to be inherent, then apply a 102 rejection. 
Inherency arguments may be included in 103 rejections with other obviousness arguments. If in addition to limitations that are inherent, there are additional, obvious differences between the prior art and the claimed invention, then apply a 103 rejection. 
For example, in a 103 rejection of Jones in view of Smith, suppose Jones lacks a first limitation that Smith teaches as obvious.  The Jones reference may still disclose a second limitation inherently, and Jones is still applied in the 103 rejection.  The examiner would need to provide reasoning as to why the second limitation is considered inherent in Jones, in addition to why the first limitation is obvious as taught by Smith.  

## Structural Limitations

**Suppose a claim cited:**
**Claim 1.  A container ... solid, non-porous walls...**

- Prior art reference – Petri Dish:

- Prior art reference – Aquarium:

**Notes:**
The prior art reference to the Petri Dish explicitly discloses the structure of being a non-porous, glass dish.  Is this an explicit or inherent disclosure for claim 1?

The prior art reference to an aquarium explicitly discloses that it is a fish tank for holding water.  Is this an explicit or inherent disclosure for claim 1?

## Intended Use Limitations

- Intended Use – statements of expected future use
- Prior art applied in a rejection must be _capable of_ performing the intended use

- Examples of intended use
- 	...a brush for brushing hair...
- 	...a brush for brushing teeth...

## Patent Application to Mitchell et al

- Claim 1.  A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion.
- Claim 2.  The stool of claim 1 wherein the stool glows in the dark.
- Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto.
- Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight.
- Claim 5. The stool of claim 3 wherein the stool glows in the dark.

- Claim 6.  A stool consisting of a seat portion having a generally planar surface, four legs connected to the seat portion, and wherein two of the legs have wheels connected thereto.

**Notes:**
Suppose you were examining 10/245,158 filed by Mitchell et al on April 4, 1996 with the following specification:

This application is a continuation of application Serial No. 08/111,111 filed November 1, 1995.  A novel stool having a wooden, generally planar, top surface with a rectangular outer edge and four adjustable legs connected to the top surface is shown in the figure.  Two of the legs have wheels connected thereto to allow the chair to be easily moved from place to place.  The wheels are mounted on the side of the two legs such that the stool must be tilted in order for the wheels to be operable.  The top surface may also have openings therein to make the stool lighter in weight and may be painted with a material which makes the stool glow in the dark.

## Prior art: DoehlerA bar stool

- Claim 1.  A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion.
- Claim 2.  The stool of claim 1 wherein the stool glows in the dark.
- Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto.
- Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight.

- “Stool” Mitchell et al

**Notes:**
Suppose you have a reference, Doehler, published on March 1, 1995 that discloses a stool as shown in the picture above that glows in the dark.  Would Doehler anticipate the claimed invention of Mitchell?

Go through each of claims 1-6 and determine if the prior art anticipates the claimed invention.

## Prior art: DoehlerA bar stool

- Claim 5. The stool of claim 3 wherein the stool glows in the dark.
- Claim 6.  A stool consisting of a seat portion having a generally planar surface, four legs connected to the seat portion, and wherein two of the legs have wheels connected thereto.

- “Stool” Mitchell et al

**Notes:**
Suppose you have a reference, Doehler, published on March 1, 1995 that discloses a stool as shown in the picture above that glows in the dark  Would Doehler anticipate the claimed invention of Mitchell?

## Prior art:  SandyU.S. Design PatentDate of Patent: Sep.3, 1994

- Claim 1.  A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion.
- Claim 2.  The stool of claim 1 wherein the stool glows in the dark.
- Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto.
- Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight.

- “Stool” Mitchell et al

**Notes:**
Suppose you have a U.S. Design Patent, Sandy, issued on September 3, 1994 that discloses a stool as shown in the picture.  Would Sandy anticipate the claimed invention of Mitchell?

## Prior art:  SandyU.S. Design PatentDate of Patent: Sep.3, 1994

- Claim 5. The stool of claim 3 wherein the stool glows in the dark.
- Claim 6.  A stool consisting of a seat portion having a generally planar surface, four legs connected to the seat portion, and wherein two of the legs have wheels connected thereto.

- “Stool” Mitchell et al

**Notes:**
Suppose you have a U.S. Design Patent, Sandy, issued on September 3, 1994 that discloses a stool as shown in the picture.  Would Sandy anticipate the claimed invention of Mitchell?

## Prior art:  DrabickU.S. Patent No. 5,509,601Date of Patent: Apr. 23, 1996

- Claim 1.  A stool comprising a seat portion having a generally planar surface and four legs connected to the seat portion.
- Claim 2.  The stool of claim 1 wherein the stool glows in the dark.
- Claim 3. The stool of claim 1 wherein two of the legs include wheels connected thereto.
- Claim 4. The stool of claim 1 wherein the seat portion is wooden and includes openings therein for making the stool lighter in weight.

- “Stool” Mitchell et al

**Notes:**
Suppose you have a U.S. Patent, Drabick, issued on April 23, 1996 that discloses a pizza box spacer as shown in the figures.  Would Drabick anticipate the claimed invention of Mitchell?

## Ownership

## Ownership 

- Why an examination issue?
- Pertains to who has the right to file amendments in the application
- In the US, the inventors have the right to file and “prosecute” the application
- Unless they have assigned that right to another.
- To show assignment, the US requires a copy of the assignment be recorded in the USPTO assignment records

**Notes:**
What is anticipation?  
§102(a)-(g)
§102 - Dates
Claim interpretation as it applies to §102 
Functional/Structural Limitations
Intended Use
“Stool” example
§112- 6th paragraph analysis
Why use 112, 6th paragraph?
Three-prong analysis 
Determine the scope of the invention
Ensure that the 112, 1st and 2nd requirements are met
Apply prior art
Carpenter’s Square example
Potato Chip Glaze Example

## Questions?

- Karin Ferriter
- E-mail:  _[Karin.Ferriter@uspto.gov](mailto:Karin.Ferriter@uspto.gov)_
- Telephone: +1 571 272 9300