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1、UNITED STATES PATENT AND TRADEMARK OFFICEUSPTO Training AcademyCurriculum Committee35 USC 102 and 103: Special Topics石家莊監(jiān)控維修 http:/03-25-11Refresher- 35 USC 102 and 103 Special Topics2ObjectivesYou will review: Inherency and Prior Art 35 USC 102/103 Rejections Official Notice 03-25-11Refresher- 35 U

2、SC 102 and 103 Special Topics3Inherency and Prior ArtWhat 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 necessarily been present in t

3、he teachings of the prior art.See: MPEP 211203-25-11Refresher- 35 USC 102 and 103 Special Topics4Inherency and Prior ArtWhy 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 s

4、ome 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 be

5、en present in the prior art. 03-25-11Refresher- 35 USC 102 and 103 Special Topics5 Inherency - ExampleTitanium 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 pri

6、or art, a Russian article, disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance.03-25-11Refresher- 35 USC 102 and 103 Special Topics6 Inherency Example (cont.)The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni

7、 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics7Inherenc

8、y and EvidenceThe 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

9、 may occur or be present in the prior art is not sufficient to establish inherency of that result or characteristic.03-25-11Refresher- 35 USC 102 and 103 Special Topics8Inherency and Evidence (cont.) Findings of fact and/or technical reasoning can support the determination that an allegedly inherent

10、 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics9Inherency and Tim

11、e of InventionThere 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. 03-25-11Refresher- 35 USC 102 and 103 Special Topics10Inherency an

12、d New PropertiesA 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 arts functioning, does not render the old composition

13、 patentably new to the discoverer.03-25-11Refresher- 35 USC 102 and 103 Special Topics11Inherency 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, f

14、or 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics12Inherency and Product Claims (cont.) For compositi

15、on 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 chemica

16、l structure, the properties applicant discloses and/or claims are necessarily present.03-25-11Refresher- 35 USC 102 and 103 Special Topics13Inherency and Method Claims Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method cl

17、aimed, 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. 03-25-11Refresh

18、er- 35 USC 102 and 103 Special Topics14Inherency 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 be patentable as a process of using. However, when a claim recites using an old composition or struc

19、ture 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics15102/103 RejectionsWhat is a “102/103” Rejection? For a particular claim, a single rej

20、ection 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. 03-25-11Refresher- 35 USC 102 and 103 Special Topics16102/103 Rejections (cont.)Why are 102/103 rejections important? 102/103 rejections provi

21、de 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.03-25-11Refresher- 35 U

22、SC 102 and 103 Special Topics17A) Claim InterpretationWhen 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 multipl

23、e interpretations of the claim(s) renders the claim(s) indefinite, a rejection under 35 USC 112, second paragraph, may be appropriate.03-25-11Refresher- 35 USC 102 and 103 Special Topics18B) InherencyWhen a reference discloses all the limitations of a claim except a characteristic, property or funct

24、ion, 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics19C) Genus/Species

25、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. 03-25-11Refresher- 35 USC 102 and 103 Speci

26、al Topics20D) Product-by-ProcessWhen 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. 03-25-11Refre

27、sher- 35 USC 102 and 103 Special Topics21E) Means-Plus-FunctionWhen 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,

28、 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. 03-25-11Refresher- 35 USC 102 and 103 Special Topics22F) RangesWhen the ranges disclosed in the reference and claimed by applicant overlap in scope but th

29、e 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.03-25-11Refresher- 35 USC 102

30、 and 103 Special Topics23102/103 ExampleThe claim is:1. A device comprising:means for capturing medical images; andmeans 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

31、 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics24102/103 Example (cont.)In this instance, a prima facie case of equivalence

32、 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 s

33、uch 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics25Official NoticeWhat is Official Notice? Official Notice is a tool tha

34、t 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics26Official Notice (cont.)Why is Official Notice i

35、mportant? 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics27Appropriate Official NoticeWhen? Official Not

36、ice 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 reject

37、ion. 03-25-11Refresher- 35 USC 102 and 103 Special Topics28Appropriate 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 a

38、rt.03-25-11Refresher- 35 USC 102 and 103 Special Topics29Appropriate 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 h

39、is 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics30Official Notice ExampleThe claim is:1. A computer apparatus comprising:a computer mouse

40、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 cust

41、omer via a touchscreen.03-25-11Refresher- 35 USC 102 and 103 Special Topics31Official 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

42、 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 prima facie case of obviousness. A proper motivat

43、ion or rationale to combine must still be provided. 03-25-11Refresher- 35 USC 102 and 103 Special Topics32Challenges to Official Notice Applicant can challenge a taking of Official Notice, but applicant must specifically point out the supposed errors in the Examiners action, which would include stat

44、ing why the noticed fact is not considered to be common knowledge or well known in the art. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate.03-25-11Refresher- 35 USC 102 and 103 Special Topics33Challenges to Official Notice (cont.) If applicant

45、adequately traverses the Examiners 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 examiners assertion

46、 of official notice would be inadequate.03-25-11Refresher- 35 USC 102 and 103 Special Topics34Challenges to Personal Knowledge AssertionsWhen the personal knowledge 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.03-25-11Refresher- 35 USC 102 and 103 Special Topics35Admitted Prior ArtIf applicant does not traverse the Examiners ass