How to Overcome Rejections Under 35 U.S.C. § 102

2012 IP Summer Seminar

Jamie Armstrong, Partner [email protected]

Peter Konzel, Partner [email protected] July 2012

Patentability Standard

MPEP § 706 AN APPLICATION SHOULD NOT BE ALLOWED, UNLESS AND UNTIL ISSUES PERTINENT TO PATENTABILITY HAVE BEEN RAISED AND RESOLVED IN THE COURSE OF EXAMINATION AND PROSECUTION, SINCE OTHERWISE THE RESULTANT PATENT WOULD NOT JUSTIFY THE STATUTORY PRESUMPTION OF VALIDITY . . . THE STANDARD TO BE APPLIED IN ALL CASES IS THE "PREPONDERANCE OF THE EVIDENCE" TEST. IN OTHER WORDS, AN EXAMINER SHOULD REJECT A CLAIM IF, IN VIEW OF THE PRIOR ART AND EVIDENCE OF RECORD, IT IS MORE LIKELY THAN NOT THAT THE CLAIM IS UNPATENTABLE.

1 How to Overcome a Prior Art Rejection under 35 USC § 102?

SHORT ANSWER: SHOW THAT IT IS MORE LIKELY THAN NOT THAT THE CLAIM IS PATENTABLE!

35 USC § 102 - Lack of Novelty

REJECTIONS FOR LACK OF NOVELTY OR ANTICIPATION ARE BASED ON 35 U.S.C. § 102. ♦ The claimed invention must have been publicly known and publicly available before the invention thereof by the Applicant. ♦ To be anticipating, each and every element of a claim, as those elements are arranged in the claim, must be explicitly or inherently described in a single prior art reference.

WE WILL DISCUSS REJECTIONS UNDER 35 USC §§ 102(a), 102(b), AND 102(e). We will not be discussing sections: 102(c) – Abandonment of the invention; 102(d) – Patented in a foreign country more than 12 months before filing in the US; 102(f) – False Inventorship 102(g)- Interference proceedings.

2 35 U.S.C. §102(a)

A person shall be entitled to a patent unless— a) the invention was known or used by others in this country, or b) patented or described in a printed publication in this or a foreign country, c) before the invention thereof by the applicant for patent, or …

35 U.S.C. §102(a)

With regard to a) the invention being known or used by others in this country;

1.) Section 102(a) applies only to the work of others, NOT the applicant’s own work. In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982). ♦ If all inventors are the same, then no rejection under §102(a) is available. ♦ A common assignee is insufficient to overcome a rejection under 102(a) if there is different inventorship. 2.) Section 102(a) requires public knowledge or use, and pertains only to activities occurring in the United States. ♦ Activities in NAFTA and WTO member countries are not included.

3 35 U.S.C. §102(a)

With regard to b) the invention being patented or described in a printed publication in this or a foreign country, ♦ The patents and publications can include printed publications, scientific articles, etc. published anywhere in the world – to include publications available on the Internet ♦ However, the publications must be sufficiently publicly available/accessible.

35 U.S.C. §102(a)

With regard to c) the activities must have occurred before the invention thereof by the applicant for patent,

♦ Despite current patent reform efforts, the US remains a first to invent country; ♦ Additionally, prior invention can only be established in the US, or in NAFTA or WTO countries.

4 Overcoming 35 U.S.C. §102(a) Rejections

HOW DO YOU OVERCOME A 102(a) Rejection? (1) Establish prior invention; (2) Show that prior invention was not “by another;” (3) Persuasively argue that claims are patentably distinguishable; (4) Show that cited reference is not enabled; or (5) Amend the claims to distinguish over the prior art.

Overcoming 35 U.S.C. §102(a)

In overcoming a ground of rejection keep in mind that Prosecution History Estoppel may prevent you from later making certain arguments that are inconsistent with arguments that were previously made during prosecution. Additionally, in making any amendments to the claims for a “substantial reason related to patentability”, always consider the effects of Prosecution History Estoppel and the Festo decisions.

5 Overcoming 35 U.S.C. §102(a) Rejections

Prosecution History Estoppel ♦ Prosecution history estoppel relates to statements made, positions taken, and amendments made to the claims during prosecution in an effort to obtain allowance, which may later bar the availability of equivalents during subsequent, post-grant proceedings.

Overcoming 35 U.S.C. §102(a) Rejections

The Festo decisions: ♦ Although an amendment to a claim during prosecution may not be a complete bar to equivalents, there is a rebuttable presumption that the patentee surrendered the availability of equivalents to the amended subject matter. ♦ Along this line, “a narrowing amendment made to comply with any provision of the Patent Act, including § 112, may invoke an estoppel.” Festo VIII, 533 U.S. 722, 736 (2002); Festo IX, 344 F. 3d 1359 (Fed. Cir. 2003). ♦ Voluntary amendments can also bar claims to equivalents.

6 Overcoming 35 U.S.C. §102(a) Rejections

The Festo decisions: ♦ In applying the Festo rationale, a court will presume that the patentee has surrendered the entire territory between the original claim limitation and the amended claim limitation. ♦ However, the presumption is rebuttable by showing that, “at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent.” Festo VIII, 35 U.S.C. at 741.

Overcoming 35 U.S.C. §102(a) Rejections

The Festo decisions: ♦ Three ways to overcome this presumption. 1. Show that the equivalent would have been unforeseeable at the time of the amendment. For example, show that later developed technology or technology that was not known in the relevant art would not have been foreseeable, but old technology would more likely have been foreseeable (but not always).

7 Overcoming 35 U.S.C. §102(a) Rejections

The Festo decisions: 2. Show that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question, which is to say that the reason for the narrowing amendment was “peripheral, or not directly relevant, to the alleged equivalent.” However, what is considered “tangential”? . . . The Court did not say! Thus, a seemingly minor amendment made to avoid prior art that contains the equivalent in question may not be tangential.

Overcoming 35 U.S.C. §102(a) Rejections

The Festo decisions: 3. Show that there was some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. For example, “[s]ome reason, such as the shortcoming of language why the patentee was prevented from describing the alleged equivalent when it narrowed the claim.” Festo IX.

8 Overcoming 35 U.S.C. §102(a) Rejections

HOW DO YOU ESTABLISH PRIOR INVENTION? – 1. ) Establish Priority 119/120 ♦ Section 119(a) – An Applicant’s previously filed foreign application is treated as if filed in the US on the filing date of the foreign application – the foreign filing date can be used to overcome a reference. ♦ Section 119(e)/120 - The filing date of an earlier filed U.S. provisional or nonprovisional application is the effective filing date. ♦ However, for a CIP, only those claims that are fully supported by the earlier parent application enjoy the filing date of that earlier parent application. ♦ Under Section 102(e), the effective filing date of an application is the filing date of the U.S. application, which includes the filing date of a PCT application designating the U.S. and which is published in the English language. ♦ Finally, Applicant’s PCT application, which includes a priority claim to a foreign application, will be treated as if filed in the US as of the date of the foreign application.

Overcoming 35 U.S.C. §102(a) Rejections

HOW DO YOU ESTABLISH PRIOR INVENTION – 1.) Establish Priority HOW DO YOU PERFECT PRIORITY? ♦ FILE CERTIFIED COPY OF FOREIGN PRIORITY DOCUMENTS; OR ♦ ENSURE COPY FORWARDED TO USPTO AS DESIGNATED/ELECTED OFFICE BY INTERNATIONAL BUREAU (PCT) ♦ SUBMIT TRANSLATIONS!

9 Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – Cited Art A CITED US REFERENCE INCLUDING A CLAIM TO A PRIOR FILED US OR INTERNATIONAL APPLICATION DESIGNATING THE US OBTAINS THE BENEFIT OF THE PRIOR FILED US/INT APPLICATION – The prior filed Application is a US application.

Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – Cited Art A CITED US/INTERNATIONAL REFERENCE INCLUDING A CLAIM TO A PRIOR FOREIGN APPLICATION DOES NOT OBTAIN THE BENEFIT OF THE PRIOR FILED FOREIGN APPLICATION!!!

10 Overcoming 35 U.S.C. §102(a) Rejections

ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind”

37 CFR § 1.131 provides for filing a declaration “to establish invention of the subject matter of the rejected claim prior to the effective date of the reference or activity on which the rejection is based.”

Overcoming 35 U.S.C. §102(a) Rejections

ESTABLISHING PRIOR INVENTION - 2.) “Swearing behind” Who may file declarations under 35 U.S.C. § 1.131? ♦ Inventor ♦ Owner of a patent under re-examination ♦ Party qualified under 37 C.F.R. §§ 1.42 (dead inventor), 1.43 (insane or legally incapacitated inventor), or 1.47 (uncooperative inventor). ♦ The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903).

11 Overcoming 35 U.S.C. §102(a) Rejections

ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind” What is needed to/How do you Swear Behind? ♦ Show actual reduction to practice prior to the effective date of the reference; or ♦ Show conception of the invention prior to the effective date of the reference AND due diligence up to the reduction to practice (constructive or otherwise). ♦ Drawings, records or other evidence must accompany and form part of the affidavit or, if missing, must explain why such evidence is missing – Lab books, journals, sketches, invention disclosure forms, records of experiments, etc.

Overcoming 35 U.S.C. §102(a) Rejections

ESTABLISHING PRIOR INVENTION – 2.) “Swearing behind” Where can prior inventive activities be established to Swear Behind? ♦ “Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country.” ♦ Cannot establish prior invention if rejection is based on a U.S. patent or published application that claim the same patentable invention. ♦ Must invoke an INTERFERENCE.

12 Overcoming 35 U.S.C. §102(a) Rejections

HOW DO YOU SHOW AN INVENTION IS “NOT BY ANOTHER” ♦ Add/remove inventors - if possible; ♦ Submit Declaration under 37 CFR § 1.132

Overcoming 35 U.S.C. §102(a) Rejections

HOW DO YOU SHOW AN INVENTION IS “NOT BY ANOTHER” 37 CFR § 1.132 provides for filing a declaration traversing the rejections or objections for a reason “not otherwise provided for”. ♦ Allows Applicants to remove cited art by filing a declaration stating that relevant portions of the cited art describes the inventor own work. ♦ In sum, it is a declaration of the inventor that the cited reference is merely describing the inventor’s own work. ♦ Can include assertions that the inventors of a cited reference learned of, or derived, the invention from the Applicant. ♦ The declaration does not need to establish reduction to practice – conception is sufficient. ♦ Finally, an affidavit from all of the inventors is not required. ♦ 1.132 declarations are typically used to show that the invention was “not by another” in the context of scientific publications, technical journals, Joint Research Agreements, etc. where a number of authors may be identified on a reference publication.

13 Overcoming 35 U.S.C. §102(a) Rejections

Prosecution Tips ♦ Prepare multiple claim sets ranging from very broad to more narrow to avoid rejections and amendments – estoppel and Festo. ♦ Seek to minimize the record during prosecution! ♦ If you can remove a reference by perfecting a priority claim, do it! ♦ If you can show “not by another” by properly adding/removing an inventor, do it! ♦ Show differences between claimed invention and cited art – prior art structures are not arranged as in the claims, alleged inherent disclosures are not necessarily present, etc. ♦ Use § 1.132 declarations to overcome public use and/or on sale bars, if applicable. For example, experimental exception, non-enabling disclosure, non reduction to practice, not ready for patenting, etc.) ♦ Demonstrate knowledge was not “by others” ♦ Demonstrate knowledge that activities were not “in this country” ♦ Use § 1.131 declarations to “swear behind” when you can show prior reduction to practice or prior conception and due diligence to reduction to practice.

Overcoming 35 U.S.C. §102(a) Rejections

Prosecution Tips ♦ Argue/Amend/Submit Declarations only when necessary and do so with caution – remember prosecution history estoppel and loss of equivalents under Festo! ♦ Include statements that claims amendments are made to correct other issues, for example, language/grammatical errors, and that amendments are made without the intention of surrendering availability of equivalents. ♦ Reserve right, without prejudice, to resubmit the original subject matter in the application, or in a continuing application.

14 35 U.S.C. §102(b)

♦ 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 …

35 U.S.C. §102(b)

♦ CONSTITUTES A STATUTORY BAR TO PATENTABILITY ♦ CANNOT SWEAR BEHIND REFERENCE ♦ INVENTORS OWN PUBLICATIONS CAN BE USED AGAINST HIM/HER (IF MORE THAN ONE YEAR)

15 35 U.S.C. §102(b) b) the invention was . . . in public use . . . more than one year prior to the date of the application for patent in the United States, or …

35 U.S.C. §102(b)

“PUBLIC USE” IS NOT PUBLIC KNOWLEDGE ♦ PRIVATE USE WITH AN EXPECTATION OF PRIVACY ♦ USE PURSUANT TO A NON-DISCLOSURE OR CONFIDENTIALITY AGREEMENT ♦ EXPERIMENTAL EXCEPTION

16 35 U.S.C. §102(b) b) the invention was . . . 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)

♦ EXPERIMENTAL EXCEPTION (SOME COMMERCIAL EXPLOITATION PERMISSIBLE, BUT NOT MARKET TESTING TO GAUGE DEMAND) ♦ IF REDUCED TO PRACTICE – NOT EXPERIMENTAL USE. See, e.g., RCA Corp. v. Data Gen. Corp., 887 F.2d 1056 (Fed. Cir. 1989) ♦ TO CONDUCT EXPERIMENTATION MUST HAVE BEEN PRIMARY PURPOSE OF INVENTOR AT THE TIME OF THE SALE. (See, e.g., Allen Eng’g. Corp. v. Bartell Indus., Inc., 299 F.3d 1336 (Fed. Cir. 2002)

17 35 U.S.C. §102(b)

♦ TWO-PRONG TEST FOR “ON SALE” BAR: ♦ PRODUCT MUST BE THE SUBJECT OF A COMMERCIAL OFFER FOR SALE AND ♦ THE INVENTION MUST BE READY FOR PATENTING BY REDUCTION TO PRACTICE OR INVENTOR HAD DRAWINGS OR OTHER DESCRIPTIONS THAT WERE “SUFFICIENTLY SPECIFIC” TO ENABLE THOSE SKILLED IN THE ART TO PRACTICE THE INVENTION. ♦ Pfaff v. Wells Elec., Inc., 525 U.S. 55 (1998).

35 U.S.C. §102(b) b) the invention …

18 35 U.S.C. §102(b)

♦ Assert by § 1.132 affidavit and support with evidence that: ♦ Non-enabling disclosure. ♦ Not reduced to practice.

35 U.S.C. §102(b)

. . . in public use or on sale in this country . . .

19 35 U.S.C. §102(b)

DOES NOT APPLY IF MANUFACTURE AND DELIVERY OCCUR OUTSIDE OF THE U.S.

Overcoming 35 U.S.C. §102(b) Rejections

1) Persuasively arguing that claims are patentably distinguishable 2) Amend the claims to distinguish over the prior art 3) Perfect priority under 35 U.S.C. § 120 or 4) Perfect priority under 35 U.S.C. § 119(e)

20 Overcoming 35 U.S.C. §102(b) Rejections

♦ In traversing an Examiner’s grounds for rejection keep in mind Prosecution History Estoppel that may estop a patentee from making certain arguments that are inconsistent with arguments made during prosecution

Overcoming 35 U.S.C. §102(b) Rejections

♦ In making any claim narrowing amendments to the claims for a “substantial reason related to patentability”, one must always consider the effect of Prosecution History Estoppel and the Festo decisions

21 Overcoming 35 U.S.C. §102(b) Rejections

♦ Prosecution History Estoppel ♦ Statements made, positions taken, and amendments to the claims during the prosecution of an application to gain allowance may bar the availability of equivalents during subsequent, post-grant proceedings

Overcoming 35 U.S.C. §102(b) Rejections

The Festo decisions: ♦ Although an amendment to a claim during prosecution may not be a complete bar, there is a rebuttable presumption that the patentee surrendered the availability of equivalents to the amended subject matter ♦ “a narrowing amendment made to comply with any provision of the Patent Act, including § 112, may invoke an estoppel.” Festo VIII, 533 U.S. 722, 736 (2002); Festo IX, 344 F. 3d 1359 (Fed. Cir. 2003) ♦ Voluntary amendments are included, too

22 Overcoming 35 U.S.C. §102(b) Rejection

♦ Section 120 provides the benefit of an earlier filing of an application filed in the U.S. ♦ The effective filing date is the same as the earliest filing date in the line of CON or DIV applications. However. . . ♦ For a CIP, only those claims that are fully supported by the earlier parent application enjoy the filing date of that earlier parent application

Overcoming 35 U.S.C. §102(b) Rejections

♦ Section 119(e) provides the benefit of an earlier filing of a U.S. provisional application

23 35 U.S.C. §102(b) Prosecution Tips

♦ Amend with caution! ♦ Prepare multiple claim sets ranging from very broad to more narrow to avoid rejections and amendments ♦ In arguing that the claims are patentably distinguishable, remember prosecution history estoppel ♦ Include a generic statement that claims are made without the intention of surrendering the availability of equivalents to the amended subject matter ♦ Compare effective filing date with publication date

35 U.S.C. §102(b) Prosecution Tips

♦ Use § 1.132 declarations to overcome public use and/or on sale bars, if applicable. For example, experimental exception, non- enabling disclosure, non reduction to practice, not ready for patenting, etc.)

24 35 USC §102(e)

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 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 …

35 USC §102(e)

♦ 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 …

25 35 USC §102(e)

A person shall be entitled to a patent unless— e) the invention was described in - . . . (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, …

35 USC §102(e)

A person shall be entitled to a patent unless— e) . . . 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 …

26 Overcoming 35 U.S.C. §102(e) Rejections

HOW TO OVERCOME § 102(e)? (1) Establish prior invention; ♦ Perfect priority under 35 U.S.C. § 119(a)-(d) or under 35 U.S.C. §§ 119(e) or 120 ♦ Submit Affidavit under 37 CFR 1.131 to “swear behind” cited reference (2) Show that prior invention is not by another ♦ Add/Remove inventors, if possible ♦ File a Declaration under 37 CFR § 1.132 showing that pertinent teachings of the cited reference are the Applicant’s own work (3) Persuasively argue that claims are patentably distinguishable (4) Show that cited reference is not enabled; or (5) Amend the claims to distinguish over the prior art

Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – Perfecting Priority ♦ Section 119(a) – An Applicant’s previously filed foreign application is treated as if filed in the US on the filing date of the foreign application – the foreign filing date can be used to overcome a reference ♦ However, unless it claims benefit to a prior US application (US Con/Div/Provisional/Int. App.), a cited art reference does not obtain the benefit of a foreign priority claim! ♦ Section 119(e) - The filing date of an earlier filed U.S. provisional application is the effective filing date ♦ Section 102(e)- The effective filing date of an Applicant’s application is the filing date of the U.S. application, which includes the filing date of a PCT application designating the U.S. and which is published in the English language ♦ Applicant’s PCT application which includes a foreign priority claim will be treated as if filed in the US as of the date of the foreign application

27 Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – Perfecting Priority ♦ Section 120 provides the benefit of an earlier filing of an application filed in the U.S. ♦ The effective filing date is the same as the earliest filing date in the line of CON or DIV applications ♦ For a CIP, only those claims that are fully supported by the earlier parent application enjoy the filing date of that earlier parent application

Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – Perfecting Priority ♦ A CITED US REFERENCE INCLUDING A CLAIM TO A PRIOR FILED US/INT APPLICATION DESIGNATING THE US OBTAINS THE BENEFIT OF THE PRIOR FILED US/INT APPLICATION!!!

28 Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – Perfecting Priority ♦ A CITED US/INTERNATIONAL REFERENCE INCLUDING A CLAIM TO A PRIOR FOREIGN APPLICATION DOES NOT OBTAIN THE BENEFIT OF PRIOR FILED FOREIGN APPLICATION!!!

Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – MPEP 706.02(f)

29 Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – Perfecting Priority WHAT TO DO? ♦ FILE CERTIFIED COPY OF FOREIGN PRIORITY DOCUMENTS; OR ♦ ENSURE COPY FORWARDED TO USPTO AS DESIGNATED/ELECTED OFFICE BY INTERNATIONAL BUREAU (PCT) ♦ SUBMIT TRANSLATIONS TO PERFECT PRIORITY!

Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – “Swearing behind”

30 Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – “Swearing behind” Who may file declarations under 35 U.S.C. § 1.131? ♦ Inventor ♦ Owner of a patent under re-examination ♦ Party qualified under 37 C.F.R. §§ 1.42 (dead inventor), 1.43 (insane or legally incapacitated inventor), or 1.47 (uncooperative inventor) ♦ The assignee or other party in interest when it is not possible to produce the affidavit or declaration of the inventor. Ex parte Foster, 1903 C.D. 213, 105 O.G. 261 (Comm'r Pat. 1903)

Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – “Swearing behind” Where can prior inventive activities be established? ♦ “Prior invention may not be established under this section in any country other than the United States, a NAFTA country, or a WTO member country.” ♦ Cannot establish prior invention if rejection is based on a U.S. patent or published application that claim the same patentable invention ♦ Must invoke an INTERFERENCE

31 Overcoming 35 U.S.C. §102(e) Rejections

ESTABLISHING PRIOR INVENTION – “Swearing behind” How do you show / What is needed to establish prior invention? ♦ Show actual reduction to practice prior to the effective date of the reference; or ♦ Show conception of the invention prior to the effective date of the reference AND due diligence from prior to the effective date of the cited reference and reduction to practice (constructive or otherwise) ♦ Drawings or records must accompany and form part of the affidavit or must explain why such evidence is missing – Lab books, journals, sketches, invention disclosure forms, records of experiments, etc.

Overcoming 35 U.S.C. §102(e) Rejections

SHOWING AN INVENTION IS “NOT BY ANOTHER” ♦ Add/remove inventors - if possible ♦ Submit Declaration under 37 CFR § 1.132

32 Overcoming 35 U.S.C. §102(e) Rejections

SHOWING AN INVENTION IS “NOT BY ANOTHER” 37 CFR § 1.132 provides for filing a declaration traversing the rejections or objections for a reason “not otherwise provided for” ♦ Remove cited art by filing a declaration stating that relevant portions of the cited art describes the inventor’s own work ♦ In sum, it is a declaration of the inventor that the cited reference is merely describing the inventor’s own work ♦ Declaration that Applicant of cited reference learned of, or derived, invention from current inventor ♦ Do not need to establish reduction to practice – conception is sufficient. ♦ Do not need an affidavit from all of the inventors Typically used to show invention was “not by another” in the context of scientific publications, technical journals, Joint Research Agreements, etc.

Overcoming 35 U.S.C. §102(e) Rejections

Prosecution Tips ♦ Prepare multiple claim sets ranging from very broad to more narrow to avoid rejections and amendments. ♦ Seek to minimize the record during prosecution! ♦ If you can remove a reference by perfecting a priority claim, do it! ♦ If you can show “not by another” by properly adding/removing an inventor, do it! ♦ Show differences between claimed invention and cited art – prior art structures are not arranged as in the claims, alleged inherent disclosures are not necessarily present, etc. ♦ Use § 1.132 declarations to overcome public use and/or on sale bars, if applicable. For example, experimental exception, non-enabling disclosure, non reduction to practice, not ready for patenting, etc.) ♦ Demonstrate knowledge was not “by others” ♦ Demonstrate knowledge was not “in this country” ♦ Use § 1.131 declarations to “swear behind” when you can show prior reduction to practice or prior conception and due diligence to reduction to practice.

33 Overcoming 35 U.S.C. §102(e) Rejections

Prosecution Tips ♦ Argue/Amend/Submit Declarations only when necessary and do so with caution – remember prosecution history estoppel and equivalents! ♦ Include statements that claims amendments are made to correct other issues, for example, language/grammatical errors, and that amendments are made without the intention of surrendering available of equivalents ♦ Reserve right, without prejudice, to resubmit the original subject matter in the application, or in a continuing application

35 U.S.C. §102

SPECIFIC REJECTIONS

34 Overcoming 35 U.S.C. §102 Rejections

♦ Examiners are required to give the claims their broadest reasonable interpretation and ♦ Give the words in a claim their “plain meaning”, or “ordinary and customary meaning” by those skilled in the art unless they are defined in the specification

Overcoming 35 U.S.C. §102 Rejections

PRODUCT-BY PROCESS CLAIMS: ♦ “The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” ♦ In re Thorpe, 777 F.2d 695, 698 (Fed. Cir. 1985)

35 Overcoming 35 U.S.C. §102 Rejections

PRODUCT-BY PROCESS CLAIMS: ♦ The burden shifts to applicant to provide evidence showing novel and unobvious differences between the claimed invention and the prior art ♦ In ex parte Gray, the Board of Interferences and Patent Appeals stated that “the dispositive issue is whether the claimed factor exhibits any unexpected properties compared with the factors disclosed by the prior art ♦ 37 CFR 1.132

Overcoming 35 U.S.C. §102 Rejections

APPARATUS CLAIMS: ♦ Claims directed to an apparatus should be distinguished from the prior art in terms of structure not function ♦ Means-plus-function claims can be problematic ♦ Preamble language of manner of operation not enough ♦ Including material or article worked on by the apparatus is not enough

36 Overcoming 35 U.S.C. §102 Rejections

♦ “A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” ♦ In re Slayter, 276 F.2d 408, 411 (CCPA, 1960)

Overcoming 35 U.S.C. §102 Rejections

♦ Show difference between prior art species and generic claim or amend claim to avoid generic claim

37 Overcoming 35 U.S.C. §102 Rejections

♦ “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” ♦ Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir., 1985) ♦ Examiners will reject if within, overlapping or touching the claimed range if the prior art specification discloses the range with “sufficient specificity”

Overcoming 35 U.S.C. §102 Rejections

♦ Show that reference does not disclose the subject matter with “sufficient specificity” or provide evidence of unexpected results or amend so that prior art range is not within, overlapping or touching the claimed range ♦ CAVEAT: Must have adequate disclosure in own specification

38 Overcoming 35 U.S.C. §102 Rejections

NON-ANALOGOUS ART/TEACHING AWAY FROM INVENTION: ♦ Not germane to a 102 rejection!

Overcoming 35 U.S.C. §102 Rejections

QUESTIONS?

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