Posts Tagged: "enablement"

Not every claimed invention will be able to be re-patented, but there will undoubtedly be some that will be able to be re-patented. This is possible thanks to 35 U.S.C. 102(b)(2)(C). So, if a patent or published patent application is commonly owned it may not be considered prior art against an identical set of claims in a subsequently filed patent application. Of course, 102(b)(2)(C) does not eliminate prior art that qualifies under 102(a)(1), but 102(a)(2) makes the patent application prior art as of its effective filing date of the claimed invention. So if you keep your invention secret and file a patent application it will be secret (and not prior art) up until the application publishes 18 months after filing. If you then re-file a second application with identical claims before publication of the first application there would be no 102(a)(1) prohibition. 102(a)(2) would make that first filing prior art as of its effective filing date, but if you remove 102(a)(2) through common ownership then a common owner would be able to effectively extend their patent term by up to 18 months; longer if publication doesn’t occur at 18 months.

In a nutshell, an invention would be obvious when someone knowledgable about the area would look at your invention and consider it to be already known; not exactly but rather known if one were to combine several references. In other words, the predictable and non-unique combination of what multiple references teach would yield your invention. The prototypical example is when you have invented A+B. A is known in the prior art, and B is known in the prior art. Upon looking at A and then looking at B, would someone of skill in the art consider A+B to be already known? If the answer is yes, then A+B is obvious. If the answer is no, then A+B is not obvious.

One thing that many individuals and professional inventors employed by corporations (i.e., “kept inventors”) have in common is that they frequently do not perceive what they have come up with as worth patenting. So many have the idea that a patent is something that gets awarded to breakthrough innovations, when in fact it is far more common to have a patent awarded to an improvement on an existing product. If you can improve upon something , there is already a market in existence for the underlying product and consumers will perceive your improvement as worth paying for then you very well may have a winning invention. Certainly, you are much farther along the path to success with that trifecta.

In my view, both the majority opinion, as well as Judge Dyk’s dissent, miss the real “written description” problem in Crown Packaging which has nothing to do with whether the common patent specification illustrates both solutions to the prior art problem. Instead, it relates to the follow description (see column 1, line 62 to column 2, line 5 of the ‘826 patent) at the end of the sentence stating how the claimed invention solved the problem of using less metal in the can end: “characterized [or “characterised” depending on which version of the ‘826 patent you use] in that, the chuck wall is inclined to an axis perpendicular to the exterior of the central panel at an angle between 30o and 60o and the concave [i.e., the reinforcing] bead narrower than 1.5 mm (0.060”).”

The back bone, however, is made up of many smaller bones. For example, there are seven cervical vertebrae in the necks of all mammals, and these bones together make up a portion of the back bone. Therefore, a more complete description of the backbone would point out that the neck is a part of the backbone. An even more complete description might include saying cervical vertebrae 1 (i.e., C1, which is a part of the neck) is connected to cervical vertebrae 2 (i.e., C2) and so on. The point is that the more description you provide the better, but you absolutely must have at least the big picture overview of how everything fits together, and how to make and use the invention. Therefore, be sure that you have disclosed with as much detail as possible how all the pieces of your invention connect, work together, function and interrelate.

In order to have a patentable business method it is necessary for the invention to accomplish some practical application. In other words, in order for a business method to be patentable it must produce a “useful, concrete and tangible result.” Although the United States Supreme Court did away with that test when it issued its decision in Bilski v. Kappos, it is still nevertheless illustrative and the best test that is out there. If you really understand what Judge Rich meant by “useful, concrete and tangible result” you come to the inescapable conclusion that it is the appropriate test and if you really target the description of the invention to satisfy the test you will have something that is patentable under the Supreme Court Bilski v. Kappos test and the USPTO guidelines that have followed.

Last week the United States Court of Appeals for the Federal Circuit issued a ruling in Goeddel v. Sugano, which might be one of a dying breed should patent reform actually pass. The case dealt with an appeal from an interference proceeding where the Board awarded priority based on a Japanese application. The Federal Circuit, per Judge Newman, explained that it was inappropriate to say that the Japanese application demonstrated a constructive reduction to practice because the application merely would allow the skilled reader to “envision” the invention covered in the interference count. If patent reform passes (and yes that could really happen) cases like Goeddel would become a thing of the past, although priority determinations like this one in Goeddel will certainly not go away.