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UNITED STATES PATENT AND TRADEMARK OFFICE

35 USC §§ 102 and 103: Special Topics. UNITED STATES PATENT AND TRADEMARK OFFICE. USPTO Training Academy Curriculum Committee. Objectives. You will review: Inherency and Prior Art 35 USC § 102/103 Rejections Official Notice . Inherency and Prior Art. What is inherency?

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UNITED STATES PATENT AND TRADEMARK OFFICE

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  1. 35 USC §§ 102 and 103: Special Topics UNITED STATES PATENT AND TRADEMARK OFFICE USPTO Training Academy Curriculum Committee

  2. Objectives You will review: • Inherency and Prior Art • 35 USC §102/103 Rejections • Official Notice Refresher- 35 USC 102 and 103 Special Topics

  3. Inherency and Prior Art What is inherency? • Inherency, with respect to applying prior art, refers to a determination of whether a characteristic, property or feature recited in a claim that is not explicitly taught by the prior art, would have necessarilybeen present in the teachings of the prior art. See: MPEP §2112 Refresher- 35 USC 102 and 103 Special Topics

  4. Inherency and Prior Art Why is inherency important? • As an Examiner, you will often find a reference that is close to being applicable under 35 USC §102, but is silent on one or more claim limitations. • In some cases, the limitations that have not specifically been discussed by the prior art; may be inherently present. • In these cases, you may reject the claim under 35 USC §102, with an explanation of why the limitations of the claim that are not explicitly taught by the prior art must have inherently been present in the prior art. Refresher- 35 USC 102 and 103 Special Topics

  5. Inherency - Example Titanium Metals Corp.v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). • The claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. • The prior art, a Russian article, disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. Refresher- 35 USC 102 and 103 Special Topics

  6. Inherency – Example (cont.) • The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties. Refresher- 35 USC 102 and 103 Special Topics

  7. Inherency and Evidence The Examiner must provide a rationale or evidence that the claim limitation not expressly disclosed by the reference is nonetheless necessarily present in the reference. • Inherency may not be established by probabilities or possibilities. • The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish inherency of that result or characteristic. Refresher- 35 USC 102 and 103 Special Topics

  8. Inherency and Evidence (cont.) • Findings of fact and/or technical reasoning can support the determination that an allegedly inherent characteristic necessarily flows from the teachings of the prior art. • Once the examiner presents evidence or reasoning tending to support the determination of inherency, then the burden shifts to applicant to rebut such evidence. Refresher- 35 USC 102 and 103 Special Topics

  9. Inherency and Time of Invention There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Refresher- 35 USC 102 and 103 Special Topics

  10. Inherency and New Properties A claim to something which is old does not become patentable upon the discovery of a new property. • E.g., 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 patentably new to the discoverer. Refresher- 35 USC 102 and 103 Special Topics

  11. Inherency and Product Claims • When the structure taught by the reference is identical or substantially identical to that of the claims, the claimed properties or functions are presumed to be inherent. • Similarly, for product-by-process claims, when structure taught by the reference is produced by identical or substantially identical processes, the claimed properties or functions are presumed to be inherent. Refresher- 35 USC 102 and 103 Special Topics

  12. Inherency and Product Claims (cont.) • For composition of matter claims, if the composition is physically the same, it must have the same properties. • Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Refresher- 35 USC 102 and 103 Special Topics

  13. Inherency and Method Claims • 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. • When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. Refresher- 35 USC 102 and 103 Special Topics

  14. Inherency and Method Claims (cont.) • The discovery of a new use for an old composition or structure based on previously unknown properties of the structure might bepatentable as a process of using. • However, when a claim recites using an old composition or structure and the “use” is distinguished merely by a newly-recognized result or outcome of the use, rather than specific claimed steps, then the claim is anticipated. Refresher- 35 USC 102 and 103 Special Topics

  15. 102/103 Rejections What is a “102/103” Rejection? • For a particular claim, a single rejection under either 35 USC §102 or 35 USC §103 should be made; however, certain circumstances will warrant related rejections using 102 and 103 in combination. Refresher- 35 USC 102 and 103 Special Topics

  16. 102/103 Rejections (cont.) Why are 102/103 rejections important? • 102/103 rejections provide for compact prosecution in instances where, e.g., there may be a dispute on the determination of inherency or matters of claim interpretation. • Note the following scenarios A) through F) for using 102/103 rejections. • See form paragraph 07-27 and corresponding examiner notes. Refresher- 35 USC 102 and 103 Special Topics

  17. A) Claim Interpretation When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 USC §102 is appropriate and given another interpretation, a rejection under 35 USC §103(a) is appropriate. • However, if the multiple interpretations of the claim(s) renders the claim(s) indefinite, a rejection under 35 USC §112, second paragraph, may be appropriate. Refresher- 35 USC 102 and 103 Special Topics

  18. B) Inherency When a reference discloses all the limitations of a claim except a characteristic, property or function, AND the examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention, the examiner may shift the burden to show lack of inherency to applicant. Refresher- 35 USC 102 and 103 Special Topics

  19. C) Genus/Species When the reference teaches a small genus which places a claimed species in the possession of the public and the species would have been obvious even if the genus were not sufficiently small, the examiner may be able to justify a rejection under 35 USC §102. Refresher- 35 USC 102 and 103 Special Topics

  20. D) Product-by-Process When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process, the examiner may be able to justify a rejection under 35 USC §102. Refresher- 35 USC 102 and 103 Special Topics

  21. E) Means-Plus-Function When the reference teaches all claim limitations except a means-plus-function limitation and the Examiner is not certain whether the element disclosed in the reference is an equivalent to the claimed element and, therefore, anticipatory, or whether the prior art element is an obvious variant of the claimed element, the examiner may be able to justify a rejection under 35 USC §102. Refresher- 35 USC 102 and 103 Special Topics

  22. F) Ranges When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range, the examiner may be able to justify a rejection under 35 USC §102 because the if the claimed range and the prior art range overlap, the reference necessarily contains a species in the claimed range. Refresher- 35 USC 102 and 103 Special Topics

  23. 102/103 – Example • The claim is: • 1. A device comprising: • means for capturing medical images; and • means for archiving the captured images. • The specification teaches that the corresponding structure under 35 USC §112, sixth paragraph, for the “means for capturing medical images” is an ultrasound device for use with heart patients. • The prior art teaches all of the claimed features except that in the reference the capturing of images is done by MRI scans. Refresher- 35 USC 102 and 103 Special Topics

  24. 102/103 – Example (cont.) In this instance, a primafacie case of equivalence can be made, but it is uncertain whether the prior arts MRI ultimately qualifies as an equivalent under 112, sixth, for the means for capturing medical images. • The spec mentioned use on “heart patients” and ultrasound is preferred over MRI as it is not affected by pacemakers like MRI, yet not all such patients have pacemakers. Thus, arguments for and against equivalence can be made, e.g., with respect to interchangeability. • As a result, a 102/103 rejection should be made. Refresher- 35 USC 102 and 103 Special Topics

  25. Official Notice What is Official Notice? • Official Notice is a tool that enables an Examiner to rely on common knowledge or incorporate facts not otherwise in the record, without documentary evidence. See: MPEP §2144.03 • Should be used rarely without documentary evidence. Refresher- 35 USC 102 and 103 Special Topics

  26. Official Notice (cont.) Why is Official Notice important? • In appropriate circumstances, Official Notice can provide facts to, e.g., support motivation in obviousness rejections, or to “fill in the gaps” which might exist in the prior art references. Refresher- 35 USC 102 and 103 Special Topics

  27. Appropriate Official Notice When? • Official Notice should only be taken by the Examiner where the facts asserted to be well-known, or to be common knowledge in the art, are capable of instant and unquestionable demonstration as being well-known so as to defy dispute. • Taking official notice should be rare when an application is under final rejection. Refresher- 35 USC 102 and 103 Special Topics

  28. Appropriate Official Notice (cont.) Assertions of technical facts in the areas of esoteric technology or specific knowledge of the prior art must always be supported by citation to some reference work recognized as standard in the pertinent art. Refresher- 35 USC 102 and 103 Special Topics

  29. Appropriate Official Notice (cont.) • If Official Notice is taken, the basis for such reasoning must be set forth explicitly. The Examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge. • It is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection is based. Refresher- 35 USC 102 and 103 Special Topics

  30. Official Notice – Example The claim is: 1. A computer apparatus comprising: a computer mouse pointer for selecting product options; and a processor programmed to calculate a total price for the product based on said selected options. • The prior art teaches: A computerized kiosk that calculates the total price for customizable products in response to customization selections entered by a customer via a touchscreen. Refresher- 35 USC 102 and 103 Special Topics

  31. Official Notice – Example (cont.) The prior art reference teaches all the claimed limitations except that the device used to input the product options is a mouse. • Official Notice can be taken that a mouse is a well-known device used to input selections. This fact is capable of instant and unquestionable demonstration, and no documentary evidence is necessary. • Official Notice is thus taking the place of a secondary reference. • This fact alone, however, is not enough to make a primafacie case of obviousness. A proper motivation or rationale to combine must still be provided. Refresher- 35 USC 102 and 103 Special Topics

  32. Challenges to Official Notice • Applicant can challenge a taking of Official Notice, but applicant must specifically point out the supposed errors in the Examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or wellknown in the art. • If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate. Refresher- 35 USC 102 and 103 Special Topics

  33. Challenges to Official Notice (cont.) • If applicant adequately traverses the Examiner’s assertion of official notice, the Examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. • However, a general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. Refresher- 35 USC 102 and 103 Special Topics

  34. Challenges to Personal Knowledge Assertions When the personalknowledge of the Examiner is referenced under 37 CFR 1.104(d)(2), the Examiner must support the reference with an affidavit “when called for by the applicant.” • Relying on personal knowledge under 37 CFR 1.104(d)(2) is different from taking Official notice. Refresher- 35 USC 102 and 103 Special Topics

  35. Admitted Prior Art If applicant does not traverse the Examiner’s assertion of Official Notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate and states the reasons why the traversal is not adequate. Refresher- 35 USC 102 and 103 Special Topics

  36. Final Rejections If the Examiner adds a reference in the next Office action after applicant’s rebuttal, and the newly-added reference is added only to directly corresponding evidence to support the prior common knowledge finding, and it does not result in a new issue or constitute a new ground of rejection, the Office action may be made final. Refresher- 35 USC 102 and 103 Special Topics

  37. Final Rejections (cont.) • If no amendments are made to the claims, the Examiner must not rely on any other teachings in the newly-added reference if the rejection is made final. • If the newly-added reference is added for additional or other reasons than to support the prior common knowledge statement and a new ground of rejection is introduced by the examiner that is not necessitated by applicant’s amendment of the claims, the rejection may not be made final. Refresher- 35 USC 102 and 103 Special Topics

  38. Summary You should now have a better understanding of: • Inherency and Prior Art • 102/103 Rejections • Official Notice Refresher- 35 USC 102 and 103 Special Topics

  39. Questions? Thank you! Refresher- 35 USC 102 and 103 Special Topics

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