From: oppedahl@panix.com (Carl Oppedahl)
Newsgroups: comp.org.eff.talk,misc.int-property,alt.suit.att-bsdi,comp.unix.bsd
Subject: Re: Patents: What they are. What they aren't. Other factors.
Date: 12 Oct 92 18:50:33 GMT
Organization: PANIX Public Access Unix, NYC

In <11828.Oct1103.34.4392@virtualnews.nyu.edu> brnstnd@nyu.edu (D. J. Bernstein) writes:

>In article <1992Oct6.182846.21881@netcom.com> mcgregor@netcom.com (Scott Mcgregor) writes:
>> In article <12962.Oct320.42.3592@virtualnews.nyu.edu> brnstnd@nyu.edu (D. J. Bernstein) writes:
>> >Fine. The burden is now on you to explain how a patent examiner, faced
>> >with ``The Fast Foo Method of Sorting Data'' and ``The Fast Bar Method
>> >of Sorting Data,'' can reliably determine whether Foo is prior art for
>> >Bar, or vice versa.
>> The method I would use is the one I understand the PTO uses.

>Okay, so let's say you apply the method you just outlined. You find that
>both Foo and Bar were (according to the people involved) invented a few
>months ago and haven't been sold or published yet. You check the claims.
>Foo has a claim saying ``Input the data, do A, then B, then C, then
>output the data.'' Bar has a claim saying ``Input the data, do D, then
>E, then output the data.'' A and B and C and D and E are all mental
>steps involving moving data, comparing data, making decisions, etc. You
>don't see A doing the same thing as D, or B and C doing the same thing
>as E, or A and B doing the same thing as D, or C doing the same thing as
>E.

>Okay, that's the entire process you've described. It hasn't come up with
>anything. Do you insist that Foo and Bar are not equivalent?

>(Yes, I'm baiting you. If you want to take another shot at my original
>challenge, feel free. This one just doesn't hold water.)

Let's see if I understand the fact pattern in the hypothetical situation.
Two patent applications, filed about the same time, each cover its own
method of sorting.  Assume further that neither applicant plagairized 
from the other.  Finally, we are to understand each was invented within 
the last year, neither was published ever, neither was sold
or offered for sale yet.  

Most helpfully for me, the hypothetical includes actual claim language.
ABC is different, we understand, from DE.

Then it could easily happen that both patents issue.  (Assuming both
claims are novel and unobvious.)  The owner of the ABC patent can
exclude people from doing what the ABC claim covers, and the owner of
the DE patent can exclude people from doing what the DE claim covers.
Note that most people would not have to worry about _both_ patents,
but only one.  The only person who has to worry about both is the one
who does A and B and C and D and E.

Neither, on this set of facts, is prior art to the other.  The reason
is that (a) neither one was published a year before the filing date
of the other and (b) neither one was sold or offered for sale in the
US a year before the filing date of the other.  (This all assumes 
the hypothetical is based in the US;  the answers might differ in some
countries other than the US.)

You might ask, then, whether the internal precedures of the Patent 
Office are such that no one handling a patent application bothers to
look at other pending applications.  Indeed other pending applications
are always looked at, for the simple reason that there might be two
people applying for the same claims.  Suppose two different people 
file at about the same time, each claiming doing A, B, and C.  This 
should be uncovered by the examiners in the Patent Office.  Then they
start what is called an interference proceeding, to determine who
invented first (not always the same in the US as who filed an 
application first).

Hope this is helpful.
.
Carl Oppedahl AA2KW  (intellectual property lawyer)
30 Rockefeller Plaza
New York, NY  10112-0228
voice 212-408-2578     fax 212-765-2519
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