# Presentation: 171264

## Patent, Trademark, Copyright, and Enforcement - Law and PolicyNovember 5-8, 2007 

- United States Patent and Trademark Office
- Global Intellectual Property Academy

**Minna Moezie**
**IPR Attaché**
**U.S. Commercial Service**
**U.S. Embassy Cairo**

## Overview

- What is anticipation?
- US Law
- Forms of Disclosure
- Grace Periods
- Examples
- Obviousness/Inventive Step
- 35 U.S.C. § 103
*Graham v. John Deere* inquiries
- Supreme Court decision in *KSR Int’l. Co. v. Teleflex, Inc.*
- A *prima facie* case of obviousness

## 

	Novelty/Anticipation

- 	***Novelty/Anticipation***

## Anticipation

- “Anticipation is established only when a single prior art reference discloses, expressly or under principles of inherency, each and every element of a claimed invention.”
- _RCA Corp. v. Applied Digital Systems, Inc._, 221 USPQ 385, 388 (Fed. Cir. 1984)
- MPEP 2131

## 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.  

## US Law:  35 U.S.C. § 102

**35 U.S.C. ****§ ****102(a) **
- Known or used by “others” in the U.S.,
- patented or described in a printed publication anywhere,
- before applicant’s date of invention.
**35 U.S.C. ****§ ****102(b)**
- _Public use or on sale_ in the U.S. by anyone, even the inventor, or
- _patented/described in a printed publication_ anywhere,
- more than one year prior to the date of application for patent.

**Notes:**
35 USC §102: 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 a patent.
(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 application for patent in the United States.

102(a): The applicant is the “inventive entity” – either one individual (the sole inventor), or more than one individual (the joint inventors). 
102(b): by anyone, even the inventor
     A printed publication is subject matter available to the public in printed form.  It includes patents, foreign documents, journals, magazines, advertisements, service manuals, etc.  A magazine article may be available in printed form, but not be available to the public.  If it is not available to the public, it cannot be considered prior art under 35 USC 102(a) or 102(b).
     The “date of invention” is assumed to be the filing date.  The applicant may establish an earlier date of invention.
     The “date of application” is the filing date of the application under examination.
102(b) – Statutory Bar
     The applicant can only overcome a proper §102(b) rejection except by amending claims.
     Stronger rejection than §102(a) and (e) because to overcome these, applicant may submit an affidavit/declaration, which if effective, can overcome the initial 102(a) or 102(e) rejection by providing evidence to swear back of a reference or show that the invention was not “by others”.   
     102(b) states “more than one year prior to the date of application in the U.S.”  There is no leeway here to establish an earlier date of invention by the applicant.  The U.S. gives applicants a one year grace period to perfect and improve their invention – not more than one year.  Therefore, a 102(b) rejection cannot be overcome by filing an affidavit under 37 CFR 1.131 or perfecting foreign priority.

## 35 U.S.C. § 102

**35 U.S.C. ****§**** 102(e)**
- Described in a U.S. patent, published U.S. patent application, or WIPO/PCT document (which meets requirements),
- by another,
- filed before applicant’s date of invention.

**Notes:**
35 USC §102: A person shall be entitled to a patent unless –
(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 effect for 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.

The term “by another” means that the inventive entity is different.

“before the invention by the applicant for patent”: as with 102(a), the date of invention is assumed to be the filing date, although applicant may establish an earlier date of invention

## 35 U.S.C. § 102

- 35 U.S.C. **§** 102(f) – Derived from another.
- 35 U.S.C. **§** 102(g) – Interference or evidence that the invention was made before and not abandoned.

**Notes:**
35 USC §102: A person shall be entitled to a patent unless –
(f) he did not himself invent the subject matter sought to be patented.

(g)(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. 

## Forms of Disclosure

- Published References
- Generally used in rejections based on         § 102(a), (b), and (e)
- U.S. or foreign patents, published patent applications, journal articles, books, technical bulletins, advertisements, service manuals
- Non-Published References
- Evidence of knowledge or use by others -   § 102(a).
- Evidence of public use or sale - §102(b).

**Notes:**
“Published references” refers to subject matter available to the public in printed form.  Note that journal articles (e.g., monthly periodicals such as “Nature”) may be available to the public before the date published on the document- STIC can provide this information if it becomes an issue during examination.

“Non-published references” – evidence of knowledge of use by others or of public use or sale- is generally information not available to the examiner.  Therefore, the lecture focuses on 102 (a), (b) and (e) and applying prior art of published references.

## Dates of Published References

-  35 U.S.C. § 102 (b) – Statutory Bar
- Issue Date
- Publication Date
-  35 U.S.C. § 102 (e) – U.S. Patent, Published Patent Application
- Filing Date
- International Filing Date of Certain WIPO/PCT Publications
-  35 U.S.C. § 102 (a) – Patent or Publication
- Issue Date
- Publication Date

**Notes:**
As we examine- there is a general hierarchical order in which to choose which subsection, (a), (b) or (e), to apply in a rejection.  

Which subsection to choose depends on the issue date or publication date of the prior art.  If the prior art happens to be a U.S. patent, a published U.S. patent application, or a WIPO/PCT document which meets certain requirements, then the filing date can also be relied upon.

Apply 102(b) first, and if 102(b) is not available, then consider 102 (e) and (a).  Let’s take a closer look at 102(b) first.

## Flow chart for considering 35 U.S.C. §102 dates

**STEP 2**: Find prior art’s publication date

**STEP 4:**  Find the prior art’s filing date or publication date

- Consider applicability of §102(e)
- Use §102(e) flow chart

- Consider applicability of §102(a)

- yes

- Apply §102(b)

- no

**STEP 3:** Is the reference available as a §102(b)?

**STEP 5:**

*Flow chart for considering 35 U.S.C. **§**102 dates*

## Filing Date

- Earliest effective U.S. filing date is 3/14/94.
- Earliest foreign priority date is 3/12/93 (under 35 U.S.C. §119).
- The examiner must check the foreign priority documents to make sure basis is present for the claimed subject matter.

**Notes:**
(Optional slide)

To determine which section of 102 to apply in a rejection, (a), (b) or (e), the examiner must first determine the application’s effective filing date.  Consider claims for continuity (e.g., divisional, continuation, continuation-in-part), and priority to a provisional application (e.g., 60/123,456).

Next, the examiner must determine the publication date of the prior art to be applied in the rejection. If the publication date of the reference is more than one year prior to the date applicant applied for a patent in the U.S. (effective U.S. filing date under 35 U.S.C. 363), make the rejection under 35 U..C. 102(b).  Otherwise, consider 102 (e) or (a). 

## 35 U.S.C. § 102 (b) Example with Foreign Patent as Prior Art

- One year before filing date 9/03/01

- Prior art publication date 12/29/00

- Application filing date 9/03/02

- An issue date prior to one year   before the filing date invokes a Statutory Bar

| Application No.:  10/234,567

Filing Date:        9/3/2002
Inventor:             Espenshade, L. K.
Continuity:         None
Foreign Priority: None |  |
| --- | --- |

-     Application being examined 	   	    Prior Art

**Notes:**
Step 1: Find the application’s filing date 
Step 2: Find the prior art’s publication date
Step 3: Is the reference available as a 102(b)? 

Step 4: Find the prior art’s filing date or publication date.

Step 5: Consider applicability of 102(e).

     Consider applicability of 102(a).  

## Grace Period

- Time period prior to filing in which applicant’s own work cannot be used against them as prior art
- Provides a limited time period to file after an intentional or accidental disclosure of the invention
- Balances applicant needs with desire for early filing

## Examples of Grace Periods

- The grace period in the U.S. is 12 months [35 U.S.C. § 102 (b)]
- Japan has a 6 month grace period.
- EPO has no grace period.

**Notes:**
Ask class to raise hand if they have a grace period, one year, 6 months etc.

## Conclusion 35 U.S.C. § 102 – Lack of NoveltyPublished References

-  § 102 (b) – Statutory Bar
-  Rely on **issue date** or publication date
-  § 102(e) – Rely on **filing dates** of:
-  U.S. Patents,
-  U.S. Patent Application Publications, and
-  WIPO/PCT International Applications in English, 	designating the U.S., filed after 11/29/2000
-  § 102(a) – Rely on **issue date** or **publication date** of:
-  U.S. or Foreign documents

## ANTICIPATION/NOVELTYPotato Chip Glaze Example

## Potato Chip Glaze

- Claim 1.  A composition comprising salt, sugar and an oily compound having 12-18 carbon atoms.

**Prior art: Jones et al (Jones)**
- A drain cleaning composition comprising salt, sugar, an oily compound having 8-16 carbon atoms, and sulfuric acid wherein the composition has a pH of 3.
- Examples wherein the oily compound has 8, 12 and 16 carbon atoms.

- Claim 2. A compound according to claim 1 wherein the oily compound has _14 carbon atoms_.

- Claim 3. A compound according to claim 1 further comprising _acetic acid_.

**Notes:**
“Potato Chip Glaze” Specification:
The present invention relates to a composition for forming a glazed coating on potato chips, a method of glazing potato chips, and potato chips produced by the disclosed method. The composition comprises salt, sugar and an oily compound having 12-18 carbon atoms, preferably 14 carbon atoms. The composition may contain additional ingredients such as flavoring agents and stabilizer. Acetic acid, a weak acid, may be added as a stabilizer. Strong acids must be avoided because they rapidly degrade the potato chips. The glazed potato chips may be made by forming a composition comprising salt, sugar, and an oily compound having from 12-18 carbon atoms, coating a raw potato chip with said composition, and thereafter baking the potato chip or frying the potato chip in oil.
     Does Jones, a drain cleaning composition, anticipate the claimed invention for a potato chip glaze?

## Potato Chip Glaze

- Claim 4.  A composition _for glazing potato chips_  comprising salt, sugar and an oily compound having 12-18 carbon atoms.

**Prior art: Jones et al (Jones)**
- A drain cleaning composition comprising salt, sugar, an oily compound having 8-16 carbon atoms, and sulfuric acid wherein the composition has a pH of 3.
- Examples wherein the oily compound has 8, 12 and 16 carbon atoms.

- Claim 5. A _potato chip glaze_ comprising salt, sugar, and an oily compound having 12-18 carbon atoms.

- Claim 6. A composition _for glazing potato chips consisting essentially_ of salt, sugar, and an oily compound having 12-18 carbon atoms.

**Notes:**
“Potato Chip Glaze” Specification:
The present invention relates to a composition for forming a glazed coating on potato chips, a method of glazing potato chips, and potato chips produced by the disclosed method. The composition comprises salt, sugar and an oily compound having 12-18 carbon atoms, preferably 14 carbon atoms. The composition may contain additional ingredients such as flavoring agents and stabilizer. Acetic acid, a weak acid, may be added as a stabilizer. Strong acids must be avoided because they rapidly degrade the potato chips. The glazed potato chips may be made by forming a composition comprising salt, sugar, and an oily compound having from 12-18 carbon atoms, coating a raw potato chip with said composition, and thereafter baking the potato chip or frying the potato chip in oil.

     Does Jones, a drain cleaning composition, anticipate the claimed invention for a potato chip glaze?

## Potato Chip Glaze

- Claim 7.  A composition _consisting essentially of_ salt, sugar and an oily compound having 12-18 carbon atoms.

**Prior art: Jones et al (Jones)**
- A drain cleaning composition comprising salt, sugar, an oily compound having 8-16 carbon atoms, and sulfuric acid wherein the composition has a pH of 3.
- Examples wherein the oily compound has 8, 12 and 16 carbon atoms.

- Claim 8.  A composition comprising salt, sugar, and an oily compound having 12-18 carbon atoms _wherein the composition is free of strong acids_.

**Notes:**
“Potato Chip Glaze” Specification:
The present invention relates to a composition for forming a glazed coating on potato chips, a method of glazing potato chips, and potato chips produced by the disclosed method. The composition comprises salt, sugar and an oily compound having 12-18 carbon atoms, preferably 14 carbon atoms. The composition may contain additional ingredients such as flavoring agents and stabilizer. Acetic acid, a weak acid, may be added as a stabilizer. Strong acids must be avoided because they rapidly degrade the potato chips. The glazed potato chips may be made by forming a composition comprising salt, sugar, and an oily compound having from 12-18 carbon atoms, coating a raw potato chip with said composition, and thereafter baking the potato chip or frying the potato chip in oil.
     Does Jones, a drain cleaning composition, anticipate the claimed invention for a potato chip glaze?

## Potato Chip Glaze

- Claim 1.  A composition comprising salt, sugar and an oily compound having 12-18 carbon atoms.

**Prior art: Lakewood et al (Lakewood)**
- A coating composition comprising salt, sugar and an oil having 8-40 carbon atoms.
- Example wherein the oil has 30 carbon atoms.

- Claim 2. A compound according to claim 1 wherein the oily compound has _14 carbon atoms_.

- Claim 3. A compound according to claim 1 further comprising _acetic acid_.

**Notes:**
“Potato Chip Glaze” Specification:
The present invention relates to a composition for forming a glazed coating on potato chips, a method of glazing potato chips, and potato chips produced by the disclosed method. The composition comprises salt, sugar and an oily compound having 12-18 carbon atoms, preferably 14 carbon atoms. The composition may contain additional ingredients such as flavoring agents and stabilizer. Acetic acid, a weak acid, may be added as a stabilizer. Strong acids must be avoided because they rapidly degrade the potato chips. The glazed potato chips may be made by forming a composition comprising salt, sugar, and an oily compound having from 12-18 carbon atoms, coating a raw potato chip with said composition, and thereafter baking the potato chip or frying the potato chip in oil.

Does Lakewood anticipate the claimed invention for a potato chip glaze?

## Potato Chip Glaze

- Claim 1.  A composition comprising salt, sugar and an oily compound having 12-18 carbon atoms.

**Prior art: Landrum et al (Landrum)**
- A coating composition for corn chips comprising salt, sugar, an oil having 16-18 carbon atoms and vinegar.

- Claim 2. A compound according to claim 1 wherein the oily compound has _14 carbon atoms_.

- Claim 3. A compound according to claim 1 further comprising _acetic acid_.

**Notes:**
“Potato Chip Glaze” Specification:
The present invention relates to a composition for forming a glazed coating on potato chips, a method of glazing potato chips, and potato chips produced by the disclosed method. The composition comprises salt, sugar and an oily compound having 12-18 carbon atoms, preferably 14 carbon atoms. The composition may contain additional ingredients such as flavoring agents and stabilizer. Acetic acid, a weak acid, may be added as a stabilizer. Strong acids must be avoided because they rapidly degrade the potato chips. The glazed potato chips may be made by forming a composition comprising salt, sugar, and an oily compound having from 12-18 carbon atoms, coating a raw potato chip with said composition, and thereafter baking the potato chip or frying the potato chip in oil.

Does Landrum, directed to corn chips, anticipate the claimed invention for a potato chip glaze?

## Conclusions

-  Examiners generally use published references as prior art in 102(a), (b) and (e) rejections
-  A reference “anticipates” an invention if
- every structural limitation is explicitly or inherently disclosed in the prior art and
- the prior art is at least capable of performing the function
-  Claims are given their broadest reasonable interpretation

## 

Obviousness/Inventive Step

***Obviousness/Inventive Step***

## Analysis of 35 U.S.C. 103 (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.**

**Notes:**
Prior Art Applied under 35 U.S.C 103(a) must meet the date requirements set forth in 35 U.S.C. 102

Section 102 defines prior art

## Analysis of 35 U.S.C. 103 (a) (Continued)

**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.**

**Notes:**
Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole.

MPEP 2141.02     Differences Between Prior Art and Claimed Invention

## DISTINCTION BETWEEN 35 U.S.C. 102 AND 103

- The distinction between rejections based on 35  U.S.C. 102 and those based on 35 U.S.C. 103...
- for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present.
- Whereas, in a rejection based on 35  U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made.
- See MPEP  § 2131 - §  2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103.

## OBJECTIVE

- The *Graham v. John Deere* inquiries
-    383 U.S. 1, 148 USPQ 459 (1966)

**Notes:**
Here the statute will be analyzed a section at a time (emphasis in red).

## Graham v. John Deere

- The Supreme Court in *Graham v. John Deere*, 383 U.S. 1, 148 USPQ 459 (1966), stated:
- under § 103, the scope and content of the prior art are to be determined;
- differences between the prior art and the claims at issue are to be ascertained;
- the level of ordinary skill in the pertinent art resolved; and
- the evidence of secondary considerations evaluated
- Against this background, the obviousness or nonobviousness of the subject matter is determined.
-   MPEP 214135 U.S.C. 103; the *Graham* Factual Inquiries

## Graham v. John Deere Inquiries (Continued)

- Inquiry One: Determining the scope and content of the prior art.
- First obtain a thorough understanding of the invention disclosed and claimed.
- Give the claims the “broadest reasonable interpretation consistent with the specification.”
- The search should cover the claimed subject matter and disclosed features that might reasonably be expected to be claimed.
- Follow the general search guidelines set forth in MPEP 904 and 904.03 regarding search of the prior art.

## Graham v. John Deere Inquiries (Continued)

- Inquiry Two: Ascertaining the differences between the prior art and the claims at issue (MPEP 2141.02)
- Ascertaining the differences between the prior art and the claims at issue requires interpreting the claim language, and considering both the invention and the prior art references as a whole.
- In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences _themselves_ would have been obvious, but whether the claimed invention as _a whole_ would have been obvious.
**Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983)**

## Graham v. John Deere Inquiries (Continued)

- Inquiry Three: Resolving the level of ordinary skill in the pertinent art--MPEP 2141.03
- The “‘hypothetical person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.”
**Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988)**

## Graham v. John Deere Inquiries (Continued)

- Inquiry Three: Resolving the level of ordinary skill in the pertinent art --*(Continued)*
- Factors that may be considered in determining level of ordinary skill in the art include
- the educational level of the inventor;
- type of problems encountered in the art;
- prior art solutions to those problems;
- rapidity with which innovations are made;
- sophistication of the technology;
- educational level of active workers in the field.
**Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984).**

## Graham v. John Deere Inquiries (Continued)

- Inquiry Four: Evaluating evidence of secondary considerations --MPEP 2141
- Such secondary considerations as
- commercial success,
- long felt but unsolved needs,
- failure of others,
- etc.,
- might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquires may have relevancy. . .

## OBJECTIVE

- Supreme Court decision in *KSR Int’l. Co. v. Teleflex, Inc.  *
*  *127 S. Ct. 1727,* *82 USPQ2d 1385 (April 30,      2007)

## KSR Int’l. Co. v. Teleflex, Inc.

- Obviousness is a question of law based on underlying factual inquires.
- The Supreme Court **reaffirmed** the basic factual inquires of *Graham v, John Deere Co.* in the determination of obviousness under 35 U.S.C. 103 (a).

**Notes:**
The Court did not totally reject the use of “teaching, suggestion, or motivation” (“TSM”) test as a factor in the obviousness analysis.  Rather the Court recognized that a showing of “teaching, suggestion, or motivation” to combine the prior art to meet the claimed subject matter could provide a helpful insight in determining whether the claimed subject matter is obvious under 35 USC 103 (a).

The question of obviousness must be resolved on the basis of factual determinations.  The Graham factors, including secondary considerations when present, are the controlling inquires in any obviousness analysis.

## KSR Int’l. Co. v. Teleflex, Inc.

- “The obviousness analysis cannot be confined by a formalistic conception of the words *teaching, suggestion, and motivation,* or by overemphasis on the importance of published articles and the explicit content of issued patents . . . In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demands, rather than scientific literature, will drive design trends.”

**Notes:**
 The Court in KSR rejected a rigid application of the TSM test, which required a showing of some teaching, suggestion, or motivation in the prior art that would lead one of ordinary skill in the art to combine the prior art elements in the manner claimed in the application or patent before holding the claimed subject matter to be obvious.

## KSR Int’l. Co. v. Teleflex, Inc.

- The Court noted that the analysis supporting a rejection under 35 USC 103 (a) **should be made explicit**, and that it was “important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the [prior art] elements” in the manner claimed.

**Notes:**
 “Often, it will be necessary . . . To look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine known elements in the fashion claimed by the patent at issue.  To facilitate review, this analysis should be made explicit.”

## KSR Int’l. Co. v. Teleflex, Inc.

- When considering obviousness of a combination of known elements, the operative question is “**whether the improvement is more than the predictable use of prior art elements according to their established functions**.”

## OBJECTIVE

- A *Prima Facie* Case of Obviousness  (MPEP 2141 - 2145)

**Notes:**
This section highlights the MPEP 2100 treatment of a prima facie case of obviousness.  The purpose of this section is to show the students that there are many factors that go into the making of a proper rejection under 35 USC 103.

## Prima Facie Obviousness

**A case sufficient on its face, being supported by at least the requisite minimum evidence...one in which the ****evidence is sufficient to support but not to compel a certain conclusion**** and does no more than furnish evidence to be considered and weighed...**
**	**_**Law Dictionary**_** 370 (3****rd**** ed. 1991)**

## Prima Facie Obviousness

- The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Court in *KSR* noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit.

## Prima Facie Obviousness

- Who goes first ?

**The**** ****Examiner !**

## Prima Facie Obviousness (Continued)

**The examiner bears the initial burden of factually supporting any prima facie conclusion of obviousness. If the examiner does not produce a prima facie case, the applicant is under no obligation to submit evidence of nonobviousness.**
- MPEP 2142

**  ****Establishing *****prima facie***** obviousness--**** MPEP 2141- 2145**

**Notes:**
This slide points out what happens when a prima facie case of obviousness is not made.

Under 35 USC Sec. 102- a person is entitled to a patent unless disqualified under one of subsections (a)-(g)

## Communicating the Prima Facie Explanation that the Claimed Invention is not Patentable

- The examiner should state:
- The relevant teachings of the prior art relied on, preferably with reference to the relevant column or page numbers and line numbers where appropriate.
- The difference or differences in the claim over the applied reference(s).
- The proposed modification of the applied reference(s) necessary to arrive at the claimed subject matter.
- An explanation why one of ordinary skill in the art at the time the invention of made would have been motivated to make the proposed modification.
- See MPEP 706.02(j) Contents of a 35 U.S.C. 103 Rejection

**Notes:**
This lays out the basics of a rejection.

## Prima Facie Obviousness (Continued)

*REBUTTAL*

**If a prima facie case is established, the burden shifts to applicant to come forward with rebuttal evidence or argument to overcome the prima facie case.**
- MPEP 2144.08

**  ****Establishing *****prima facie***** obviousness --**** MPEP 2141- 2145 *****(Continued)***

## Prima Facie Obviousness (Continued)

*REBUTTAL*

**When an applicant submits evidence, the examiner must reconsider the patentability of the claimed invention. **
**The decision on patentability must be made based upon consideration of all the evidence, including the evidence submitted by the examiner and the evidence submitted by the applicant.**
- MPEP 2142

**  ****Establishing *****prima facie***** obviousness --**** MPEP 2141- 2145 *****(Continued)***

**Notes:**
The evidence submitted by applicant may have been in the specification as originally filed or in reply to a rejection.

The ultimate determination of patentability is based on the entire record, by a preponderance of evidence, with due consideration to the persuasiveness of any arguments and any secondary evidence.
MPEP 2142 -- In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).

## Questions?

- Minna Moezie
- E-mail:  Minna.Moezie@mail.doc.gov
- Telephone: +202 2797 2607