Prior Art Flashcards

Question

What are the 102(a)(1) cases?

Answer 1

Rosaire and National Tractor

Answer 2

a tractor power stopper (an invention for this spectator sport - gets heavier over time); the prior art reference was a design on a tablecloth by 2-3 people; don't have the tablecloth, but have testimony from more than one person; what they drew was all elements of the power stopper this isn't "known or used by others" because it's not public; writes "publicly" [used by others] into the law; didn't get to the real world (kind of like an accidental anticipation rationale) intuition is that the public isn't going to learn from these guys

Answer 3

walk around and pick up some rocks was public enough, because there was a risk that all the people in the industry who knew that weren't locked in by contract would talk about (which they in fact did, since we're talking about it)

Answer 4

The applicants sought a patent for methods of preparing foods comprising extruded soy cotyledon fiber. The Board denied the application because the methods had already been described in a printed publication more than one year before the date of the application. Almost two years before they filed their application, the applicants had presented a printed slide presentation at a meeting of chemists and at a university. The presentation was displayed continuously for two and a half days and one day, respectively. Every limitation of the invention was disclosed in the presentation. Although no copies of the presentation were disseminated, there was no prohibition on note-taking or copying. Only a few slides recited what was not already known in the field. The presentation was never catalogued or indexed in any library or database. In affirming the Board's decision, the court held that, because the presentation had been made publicly accessible, it constituted a printed publication for the purposes of § 102(b). The court held that the fact that the presentation was never distributed to the public and was never indexed did not preclude a finding that it was a printed publication.

Answer 5

Some major organizations say so as long as it's indexed problem: dating of stuff online

Answer 6

a PhD student wrote a document that anticipated an invention; three advisers received it, and that's it rule was that as long as it's in a library and in a card catalog, then it's prior art

Answer 7

1. if there is a huge money risk (on P or D's side) 2. put pressure on P's to settle cases (because the more money they ask for from the infringing D, the more likely the D is trying to find prior art to make the number drop to 0, so P is more likely to drop its number)

Answer 8

“A person shall be entitled to a patent unless Intereferences: (g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or Category of prior art: (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. Both: In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.”

Answer 9

look to 102(g) to borrow vocab and concepts to use to define "invention"

Answer 10

1. Conception 2. Reduction to practice 3. Diligence 4. Abandonment/Suppression/Concealment 5. Filing

Answer 11

1. Write a patent application (constructive) | 2. Build a working version

Answer 12

When you have all the elements of your invention in your head (corroborated by evidence)

Answer 13

were you working on it between conception and RTP

Answer 14

after non-constructive RTP and before filing: did you hide it from the world? did you abandon it - showing that you didn't want to go forward with it? did you hide it once you built it? did you conceal it?

Answer 15

1. Vocabulary used for 102(a) 2. Sets up the rules for interferences (g)(1) 3. Acting as its own category prior art

Answer 16

a situation where two parties show up having filed the same invention, to determine who invented first

Answer 17

One of us didn't ask for the patent (and now it's probably too late), and wants to blow up the other's patent (who did file) It can be secret - doesn't have to be public under 102(a)

Answer 18

No: they are very rare, successful or not. Those who filed second very rarely win; so AIA might not change much in practice.

Answer 19

Maybe, but it makes people more likely to settle because they're worried that someone will work hard to blow up their patent; so on balance, it might be OK

Answer 20

The first to reduce to practice (RTP) wins unless 2nd to RTP can prove earlier conception AND diligence from time prior to first’s conception to subsequent RTP or filing. And constructive RTP is only filing, not a publication. And, if there is abandonment/concealment/supression by someone, that wipes out everything before that ACP.

Answer 21

When my ASC screws me up from blowing up your patent

Answer 22

by Board of Patent Appeals and Interferences: Trial-like proceeding in front of a three-person panel; look at evidence, try to figure out who is the true first inventor

Answer 23

1. File a patent application, and the examiner is like, I've seen this before, and the examiner brings the claim 2. Patent issues, you file, and either you or the examiner notices and brings the claim

Answer 24

the guy who filed first in an interference

Answer 25

the guy who filed second in an interference

Answer 26

A sample claim that covered the invention that both parties say they invent Because we both describe it differently, patent office makes a patent that someone would win during the trial, then the winner could tweak the language through normal patent prosecution

Answer 27

A wins, because he reduced to practice first, and B did not conceive Policy: helping the little guy who is first to conceive but second to file

Answer 28

B wins, first to RTP, and other guy wasn't diligent until after B conceived Policy: first to invent is great, but be diligent or tough luck

Answer 29

A wins, B loses, A's conception and diligence was before B's RTP Policy: be openminded to people that don't have the resources to build stuff (can't build a nuclear reactor)

Answer 30

B wins, because first to RTP, and A's real D wasn't before B's C Policy: what if good-economic reasons limits diligence? too bad, has to be start with consistent diligence. Why do court's do this? fraud; hard to validate that you stopped for good economic reasons - every inventor would say that; still kind of want a patent system that doesn't punish good economic decisions, so this is frustrating

Answer 31

A wins, A is first to RTP, and B's C is not before A's C

Answer 32

A loses, was first to RTP, but B's C and D was before A's C Policy: once you reduce to practice, hurry up and file; don't ASC or you lose everything if you're going to vacation, do it before you RTP, because then you just lose diligence, not conception

Answer 33

the race to conceive, not to RTP or file

Answer 34

get a good spec, you can fuss with claims later (limitation: sometimes when you are writing the claims, you get a better idea for the spec), so you can get RTP first (constructively), but if your claims spec isn't fully developed, maybe spend a little more time, because then you're sacrificing the whole thing (your patent is worth less with a bad spec and claims)

Answer 35

use an article as the spec, and then decide later whether to kick it further along cash-strapped people usually, like UCLA

Answer 36

it's about inventions that are described in patent applications, which is a private conversation with the govt. for 18 months (where it's either published or issues) pretends this period of time doesn't exist; acts like the govt. is immediate as soon they issue or publish it, it becomes prior art, but at the filing date (not the issue or publishing date)

Answer 37

triggers based on your date of filing (different critical date) - one year prior to the date of filing trying to get you to hurry up and file (even if you are first to invent) not a first to file provision: one year grace period

Answer 38

you can trigger it against yourself e.g., you sold it (Moleculon)

Answer 39

Rubix cube case: about whether he sold it a year before he filed. Court said that selling his idea wasn't a sale of his invention. Appellant sought review of an order from the district court finding infringement. The appeals court affirmed in part and reversed in part. The appeals court affirmed the infringement of certain claims holding that the patent was not in public use or on sale pursuant to 35 U.S.C.S. §102. The appeals court reversed the finding of infringement as to certain claims holding that the court improperly interpreted the claims. First, the appeals court held that the subject claims were not in public use because appellee did not give over the invention for free and unrestricted use by another. The appeals court next found that the invention was not on sale because the assignment or sale of invention rights was not a sale. Lastly, the appeals court held that the interpretation of the subject claim was erroneous because the court's interpretation expanded the scope of the structure recited in the claim.

Answer 40

you make a statutory bar against yourself because you had it (and sold it?) before

Answer 41

want to have a system where it doesn't really matter who gets the idea; want to be able to trade patent rights where small guys who have good ideas, but can't do anything with it might be some cheating on the edges

Answer 42

ready for patenting case; brought the bar down on himself (computer chip engineer) Petitioner developed a computer chip socket and prepared detailed engineering drawings describing the invention. A company placed an order for the sockets after petitioner showed it the drawings in March 1981. However, the invention was not reduced to practice until July 1981, and petitioner filed a patent application in April 1982. Petitioner brought an infringement suit against respondent, but judgment in petitioner's favor was reversed by the court of appeals. The Court affirmed, holding that petitioner was barred from patenting his invention as it had been on sale more than one year prior to the patent application, pursuant to 35 U.S.C.S. § 102(b), due to petitioner's marketing of the product to the company. It was not necessary to show the invention was reduced to practice at the time in order for it to have been on sale. Rather, the on-sale bar to patentability applied where the invention was the subject of a commercial offer for sale and the invention was ready for patenting, which could be demonstrated either by reduction to practice or, as here, by preparation of descriptions that were sufficiently specific to enable one skilled in the art to practice the invention.

Answer 43

The district judge found that plaintiff inventor's main purpose in his use of his process more than one year before the date of application was secret, and for that reason its predominantly commercial character was prevented from invalidating the patent. The reviewing court overruled the case relied on by the lower court in reaching its decision. The court held that, if plaintiff went beyond the period of probation, he forfeited his right regardless of how little the public may have learned about his invention. Plaintiff could continue for more than a year to practice his invention for his private purposes of his own enjoyment, and later patent it. But that was not an exception to the doctrine, for he was not then making use of his secret to gain a competitive advantage over others, and did not thereby extend the period of his monopoly.

Answer 44

1. Commercial offer for sale, AND | 2. Invention must be ready for patenting

Answer 45

if he transferred the prototype (which doesn't seem right; just idea? prototype is RTP)

Answer 46

1. RTP before critical date OR 2. Drawings or other descriptions that are sufficiently specific to enable a person skilled in the art to practice the invention

Answer 47

2: 1. Commercial offer for sale 2. Invention is RFP

Answer 48

Might want to excuse some general offers, because no commercial advantage (e.g., from cheaper concealed method) or information isn't flowing So at 2 or 3

Answer 49

to fund cool stuff, like the stuff that NASA does; commissioning

Answer 50

someone said you have a 102(b) problem; court said no, because public use was an experiment (it's MY public use, and MY experiment) The patent infringement suit was brought by appellee, a patent holder for a type of wooden pavement, against appellants, a city, an individual, and a corporation. Appellant city contracted with appellant corporation to construct wooden pavements but claimed that what was constructed did not infringe on appellee's patent. The Court also found that appellee's experimental use of his pavement prior to obtaining a patent did not constitute public use within the meaning of patent law.

Answer 51

it's an answer to a 102(b) statutory bar, and a 102(a) public use

Answer 52

two guys at NIH - Saudeau and Ito; Ito gives Saudeau his invented centrifuge to use in an unsecured laboratory Baxter says what they were doing is experimental, and so shouldn't be public use; court says no it wasn't experimental because Saudeau was just tinkering with it for his own particular use and it was a public use since the area was unsecured, so bar is raised Plaintiffs had a patent for a sealless centrifuge that was used to separate blood into its components and sued defendants for infringement. Defendants alleged prior public use that involved two research scientists at the National Institutes of Health (NIH), who were not connected to the inventor named by plaintiffs' patent. Before the critical date, a research scientist had centrifuge built at NIH and determined that it worked properly for its original purpose, as a separator of blood into its components. The scientist also tested the centrifuge's suitability for his own purposes. Plaintiffs argued that purported public use was negated by fact that it was experimental use. The court held that public testing before the critical date by a third party for his own unique purposes of invention previously reduced to practice and obtained from someone other than a patentee, when such testing was independent of and not controlled by patentee, was an invalidating public use, not experimental use.

Answer 53

yes, b/c sometimes you need to raise some capital as part of your experimental process (happened in Pfaff and City of Elizabeth), but better really be experimental and not be cheating the patent term

Answer 54

1. City of Elizabeth: don't use MY experiment against ME 2. Baxter: you can use his public use/non-experiment against me 3. Metallizing: if i sell (secretly or not) the non-informing output of my clever idea, but not my clever idea, bar is raised 4. Gore: if he tries to sell (secret or not) the non-informing output of my clever idea, bar isn't raised 5. Other: if he tries to sell my secret product, bar is raised

Answer 55

has to be something that goes toward what you're patenting; not towards marketing what you're patenting

Answer 56

applying metal to things to make a metal like surface on it; wanted to patent the process; sells the end product should be: has commercial advantage outside the patent term court said: you're cheating; raise the bar The district judge found that plaintiff inventor's main purpose in his use of his process more than one year before the date of application was secret, and for that reason its predominantly commercial character was prevented from invalidating the patent. The reviewing court overruled the case relied on by the lower court in reaching its decision. The court held that, if plaintiff went beyond the period of probation, he forfeited his right regardless of how little the public may have learned about his invention. Plaintiff could continue for more than a year to practice his invention for his private purposes of his own enjoyment, and later patent it. But that was not an exception to the doctrine, for he was not then making use of his secret to gain a competitive advantage over others, and did not thereby extend the period of his monopoly.

Answer 57

* How many prototypes * How long were you testing * Records during testing * Confidentiality * Commercial advantage of a sale * Inventor's control over the experiment (less control, less of an experiment) * Tinkering boat example, because boat went off out of his control * Whether the experiment is tailored to the ultimately claimed features * Could you have done the testing more quietly - modern view (contrary to what City of Elizabeth said)

Answer 58

you are cheating Metallizing: you're cheating City of Elizabeth: not cheating Moleculon: not cheating Gore: not cheating

Answer 59

harder case:

Answer 60

pointing to Cropper to blow up Gore letter into the US from Copper is an offer to sale, describes operation, and encloses a photo; would be a statutory bar to him, but to Gore? no if somebody makes a secret offer to sale, don't raise the 102(b) bar

Answer 61

Maybe Was it public? Nah, just at the lab Was it an experiment? Yeah, they are researchers! that's what they do! Shows some hostility of someone else using another's invention

Answer 62

Prior art ramifications: 102(a): Yes/No: risk that somebody else is going to do something 102(b): Yes/No: no offer to sell, but risk that somebody else is going to do something 102(g): Yes: possibility of ASC Policy:

Answer 63

Prior art ramifications: 102(a): No, public display is a public use, but not by others before your conception 102(b): Yes, have one year from 1990 to file 102(g): No Policy:

Answer 64

Prior art ramifications: 102(a): No, not known or used by others before your conception 102(b): Yes, have one year from 1990 to file 102(g): No Policy:

Answer 65

Prior art ramifications: 102(a): No: Like City of Elizabeth? experimentation is an answer to public use; can have some experimental sales; not RTP: no drawings and still experimenting 102(b): Yes, selling output to commercial advantage - fewer costs for fuel and he knows; No, too general of an offer 102(g): No, still experimenting Policy:

Answer 66

Prior art ramifications: 102(a): Yes: can't say it's experimentation anymore 102(b): Yes, offer to sell, which has commercial advantage (because it's priced to sale); No, general offer 102(g): No, may or may not just be selling to get capital Policy:

Answer 67

Prior art ramifications: 102(a): No, because not public - National Tractor 102(b): No because no offer to sell 102(g): Yes, RTP before you, and conception and diligence before your conception, but he may have ASC Policy:

Answer 68

Prior art ramifications: 102(a): Yes, may be a little more public - Rosaire (extreme view) 102(b): No because no offer to sell 102(g): Yes, RTP before you, and conception and diligence before your conception, but he may have ASC Policy:

Answer 69

1. out picking up rocks in public (even though it doesn't inform) 2. lots of people in the industry that know and aren't contracted from talking about it

Answer 70

Prior art ramifications: 102(a): No, looks more National Tractor than Rosaire - core idea is not really publicly accessible 102(b): No, like Gore, selling output of invention by third party (but if they came to patent, no) 102(g): Yes, RTP before you, and conception and diligence before your conception, but he may have ASC (but doesn't look like it - maybe concealment) Policy:

Answer 71

Prior art ramifications: (didn't go over in class) 102(a): No 102(b): 1 year from 1992 to file 102(g): conceived and was diligent before 1990, yes Policy:

Answer 72

Prior art ramifications: (didn't go over in class) 102(a): No 102(b): Yes, 1 year from 1992 to file, might benefit from it commercially; no, too general of an offer 102(g): No Policy:

Answer 73

Prior art ramifications: (didn't go over in class) 102(a): No 102(b): No, like Gore 102(g): you need to be diligent and RTP Policy:

Answer 74

Prior art ramifications: (didn't go over in class) 102(a): No, not public before your conception 102(b): No, like Gore 102(g): Yes, he RTP'ed first, and you didn't conceive before him Policy:

Answer 75

obviousness

Answer 76

higher threshold than anticipation, might not be patentable even if it's literally new; patent-free zone around things we already know

Answer 77

look at the differences between the subject matter yet to patented and the prior art, and judge obviousness at the time the invention was made to a person having ordinary skill in the art only judge the invention, not the process (may have been lucky and fallen into your invention)

Answer 78

hindsight; some things look obvious in hindsight

Answer 79

anything you can get in under 102, so long as it is an analogous art; so references that are really far removed can't come in can combine references and common sense to show obviousness

Answer 80

that they have at least a little bit of creativity

Answer 81

the TSM test - teaching suggestion motivation test: we're going to make you show that there was a teaching, suggestion, or motivation in the prior art that would have made someone at the time combine the references KSR says it's more than just that test

Answer 82

a good piece of evidence to show that everyone else was going the other way - just like in the Bezos example - everyone else was saying more clicks, not one-click

Answer 83

Commercial success (answered by showing that your invention wasn't the only reason for commercial success) Copying - doesn't always apply though: may not have copied; or you could say of course i copied: your thing wasn't patentable Existence of Licensees: better be for real money Long felt need: answer to this might be to something else that has changed, e.g. FDA just wouldn't approve any diet pills, but Obama changed the regulations so now they are approvable Praise (that's a breakthrough!) or skepticism (that'll never work; totes not obvious) Prior failures by others, especially my adversary Prior failures by me, assuming I'm skilled in the art

Answer 84

Look for objective evidence to show that what you did wasn't obvious

Answer 85

Independent invention is objective evidence of obviousness answer: 1. already covered under 102(g) 2. lots of great inventions were independently invented around the same time (e.g., telephone) (answer: maybe when 50 people have the same invention, there should be a presumption that can be overwhelmed)

Answer 86

can apply obviousness analysis to 102(b) prior art (even though it's probably contrary to statute) - so one year prior to filing bad part: even stuff long after invention (if you conceived more than one year before filing, up until filing date) can be used to hurt you on obviousness

Answer 87

then 102(e) isn't triggered, but 102(g) problems may still be there

Answer 88

one with at least one critical date at invention 102(a): public use before invention 102(e): filed before invented

Answer 89

102(b), because it is fact; whereas, invention has to hammered out by a judge or jury

Prior Art Flashcards

(115 cards)