Editing MPEP 2141
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I. STANDARD OF PATENTABILITY TO | |||
BE APPLIED IN OBVIOUSNESS REJECTIONS | |||
Patent examiners carry the responsibility of making | Patent examiners carry the responsibility of making | ||
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for determining obviousness are as follows: | for determining obviousness are as follows: | ||
(A) Determining the scope and contents of the | |||
prior art; | |||
(B) Ascertaining the differences between the | |||
prior art and the claims in issue; | |||
(C) Resolving the level of ordinary skill in the | |||
pertinent art; and | |||
(D) Evaluating evidence of secondary considerations. | |||
The Supreme Court reaffirmed and relied upon the | The Supreme Court reaffirmed and relied upon the | ||
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156 USPQ 406 (Ct. Cl. 1967). | 156 USPQ 406 (Ct. Cl. 1967). | ||
II. BASIC CONSIDERATIONS WHICH | |||
APPLY TO OBVIOUSNESS REJECTIONS | |||
When applying 35 U.S.C. 103, the following tenets | When applying 35 U.S.C. 103, the following tenets | ||
of patent law must be adhered to: | of patent law must be adhered to: | ||
(A) The claimed invention must be considered as | |||
a whole; | |||
(B) The references must be considered as a whole | |||
and must suggest the desirability and thus the obviousness | |||
of making the combination; | |||
(C) The references must be viewed without the | |||
benefit of impermissible hindsight vision afforded by | |||
the claimed invention; and | |||
(D) Reasonable expectation of success is the standard | |||
with which obviousness is determined. | |||
Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, | |||
1143 n.5, 229 USPQ 182, 187 n.5 (Fed. Cir. 1986). | |||
III. OBJECTIVE EVIDENCE MUST BE | |||
CONSIDERED | |||
Objective evidence or secondary considerations | Objective evidence or secondary considerations | ||
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determination on patentability is made on the | determination on patentability is made on the | ||
entire record. In re Oetiker, 977 F.2d 1443, 1446, | entire record. In re Oetiker, 977 F.2d 1443, 1446, | ||
24 USPQ2d 1443, 1445 (Fed. Cir. 1992). However, | 24 | ||
USPQ2d 1443, 1445 (Fed. Cir. 1992). However, | |||
evidence developed after the patent grant in response | evidence developed after the patent grant in response | ||
to challenge to the patent validity’s should not be | to challenge to the patent validity’s should not be | ||
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be relevant to the patent validity inquiry). | be relevant to the patent validity inquiry). | ||
See | See MPEP § 716 - § 716.06 for a discussion of | ||
objective evidence and its role in the final legal determination | objective evidence and its role in the final legal determination | ||
of whether a claimed invention would have | of whether a claimed invention would have | ||
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===2141.01 Scope and Content of the Prior Art=== | ===2141.01 Scope and Content of the Prior Art=== | ||
I.PRIOR ART AVAILABLE UNDER 35 U.S.C. | |||
102 IS AVAILABLE UNDER 35 | |||
U.S.C. 103 | |||
“Before answering Graham’s ‘content’ inquiry, it | “Before answering Graham’s ‘content’ inquiry, it | ||
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1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 | 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 | ||
(1987). Subject matter that is prior art under | (1987). Subject matter that is prior art under | ||
35 U.S.C. 102 can be used to support a rejection | 35 | ||
U.S.C. 102 can be used to support a rejection | |||
under section 103. Ex parte Andresen, 212 USPQ 100, | under section 103. Ex parte Andresen, 212 USPQ 100, | ||
102 (Bd. Pat. App. & Inter. 1981) (“it appears to us | 102 (Bd. Pat. App. & Inter. 1981) (“it appears to us | ||
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For an overview of what constitutes prior art under | For an overview of what constitutes prior art under | ||
35 U.S.C. 102, see | 35 | ||
U.S.C. 102, see MPEP § 901 - § 901.06(d) and | |||
§ 2121 - § 2129. | |||
II.SUBSTANTIVE CONTENT OF THE PRIOR | |||
ART | |||
See | See MPEP § 2121 - § 2129 for case law relating to | ||
the substantive content of the prior art (e.g., availability | the substantive content of the prior art (e.g., availability | ||
of inoperative devices, extent to which prior art | of inoperative devices, extent to which prior art | ||
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embodiments, admissions, etc.). | embodiments, admissions, etc.). | ||
III.CONTENT OF THE PRIOR ART IS DETERMINED | |||
AT THE TIME THE INVENTION | |||
WAS MADE TO AVOID HINDSIGHT | |||
The requirement “at the time the invention was | The requirement “at the time the invention was | ||
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denied, 469 U.S. 851 (1984). | denied, 469 U.S. 851 (1984). | ||
IV.35 U.S.C. 103(c) — EVIDENCE REQUIRED | |||
TO SHOW CONDITIONS OF 35 U.S.C. 103 | |||
(c) APPLY | |||
An applicant who wants to avail himself or herself | An applicant who wants to avail himself or herself | ||
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of section 102. See MPEP § 706.02(l)(1). See also In | of section 102. See MPEP § 706.02(l)(1). See also In | ||
re Bartfeld, 925 F.2d 1450, 1453-54, 17 | re Bartfeld, 925 F.2d 1450, 1453-54, 17 | ||
USPQ2d 1885, 1888 (Fed. Cir. 1991) (Applicant attempted to | USPQ2d | ||
1885, 1888 (Fed. Cir. 1991) (Applicant attempted to | |||
overcome a 35 U.S.C. 102(e)/103 rejection with a terminal | overcome a 35 U.S.C. 102(e)/103 rejection with a terminal | ||
disclaimer by alleging that the public policy | disclaimer by alleging that the public policy | ||
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====2141.01(a) Analogous and Nonanalogous Art==== | ====2141.01(a) Analogous and Nonanalogous Art==== | ||
I. TO RELY ON A REFERENCE UNDER | |||
35 U.S.C. 103, IT MUST BE ANALOGOUS | |||
PRIOR ART | |||
The examiner must determine what is “analogous | The examiner must determine what is “analogous | ||
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problem with which the inventor is involved). | problem with which the inventor is involved). | ||
II. PTO CLASSIFICATION IS SOME EVIDENCE | |||
OF ANALOGY, BUT SIMILARITIES | |||
AND DIFFERENCES IN STRUC- | |||
TURE AND FUNCTION CARRY MORE | |||
WEIGHT | |||
While Patent Office classification of references and | While Patent Office classification of references and | ||
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underground formation anomalies.). | underground formation anomalies.). | ||
III. ANALOGY IN THE CHEMICAL ARTS | |||
See, for example, Ex parte Bland, 3 USPQ2d 1103 | See, for example, Ex parte Bland, 3 USPQ2d 1103 | ||
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would include the dye arts in general.). | would include the dye arts in general.). | ||
IV. ANALOGY IN THE MECHANICAL | |||
ARTS | |||
See, for example, In re Oetiker, 977 F.2d 1443, | See, for example, In re Oetiker, 977 F.2d 1443, | ||
24 USPQ2d 1443 (Fed. Cir. 1992) (Applicant claimed | 24 | ||
an improvement in a hose clamp which differed from | USPQ2d 1443 (Fed. Cir. 1992) (Applicant claimed | ||
an | |||
improvement in a hose clamp which differed from | |||
the prior art in the presence of a preassembly “hook” | the prior art in the presence of a preassembly “hook” | ||
which maintained the preassembly condition of the | which maintained the preassembly condition of the | ||
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materials to accomplish their respective purposes.). | materials to accomplish their respective purposes.). | ||
V. ANALOGY IN THE ELECTRICAL | |||
ARTS | |||
See, for example, Wang Laboratories, Inc. v. | See, for example, Wang Laboratories, Inc. v. | ||
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were in an analogous art.). | were in an analogous art.). | ||
VI. EXAMPLES OF ANALOGY IN THE | |||
DESIGN ARTS | |||
See MPEP § 1504.03 for a discussion of the relevant | See MPEP § 1504.03 for a discussion of the relevant | ||
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prior art references as a whole. See MPEP § 2111 - § 2116.01 for case law pertaining to claim interpretation. | prior art references as a whole. See MPEP § 2111 - § 2116.01 for case law pertaining to claim interpretation. | ||
I.THE CLAIMED INVENTION AS A | |||
WHOLE MUST BE CONSIDERED | |||
In determining the differences between the prior art | In determining the differences between the prior art | ||
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product.). | product.). | ||
II.DISTILLING THE INVENTION DOWN | |||
TO A “GIST” OR “THRUST” OF AN INVENTION | |||
DISREGARDS “AS A WHOLE” | |||
REQUIREMENT | |||
Distilling an invention down to the “gist” or | Distilling an invention down to the “gist” or | ||
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word solution to a problem). | word solution to a problem). | ||
III.DISCOVERING SOURCE/CAUSE OF A | |||
PROBLEM IS PART OF “AS A WHOLE” | |||
INQUIRY | |||
“[A] patentable invention may lie in the discovery | “[A] patentable invention may lie in the discovery | ||
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problem. | problem. | ||
IV.APPLICANTS ALLEGING DISCOVERY | |||
OF A SOURCE OF A PROBLEM MUST | |||
PROVIDE SUBSTANTIATING EVI- | |||
DENCE | |||
Applicants who allege they discovered the source | Applicants who allege they discovered the source | ||
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problem of manual clearinghouse operations.). | problem of manual clearinghouse operations.). | ||
V.DISCLOSED INHERENT PROPERTIES | |||
ARE PART OF “AS A WHOLE” INQUIRY | |||
“In determining whether the invention as a whole | “In determining whether the invention as a whole | ||
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rejections based on inherency. | rejections based on inherency. | ||
VI.PRIOR ART MUST BE CONSIDERED IN | |||
ITS ENTIRETY, INCLUDING DISCLOSURES | |||
THAT TEACH AWAY FROM THE | |||
CLAIMS | |||
A prior art reference must be considered in its | A prior art reference must be considered in its | ||
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does not criticize, discredit, or otherwise discourage | does not criticize, discredit, or otherwise discourage | ||
the solution claimed….” In re Fulton, | the solution claimed….” In re Fulton, | ||
391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. | 391 | ||
F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. | |||
Cir. 2004). See also MPEP § 2123. | Cir. 2004). See also MPEP § 2123. | ||
===2141.03 Level of Ordinary Skill in the Art=== | ===2141.03 Level of Ordinary Skill in the Art=== | ||
FACTORS TO CONSIDER IN DETERMINING | |||
LEVEL OF ORDINARY SKILL | |||
“Factors that may be considered in determining | “Factors that may be considered in determining | ||
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ordinary skill in the art”). | ordinary skill in the art”). | ||
SPECIFYING A PARTICULAR LEVEL OF | |||
SKILL IS NOT NECESSARY WHERE THE PRIOR | |||
ART ITSELF REFLECTS AN APPROPRIATE | |||
LEVEL | |||
If the only facts of record pertaining to the level of | If the only facts of record pertaining to the level of | ||
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2001). | 2001). | ||
ASCERTAINING LEVEL OF ORDINARY SKILL | |||
IS NECESSARY TO MAINTAIN OBJECTIVITY | |||
“The importance of resolving the level of ordinary | “The importance of resolving the level of ordinary | ||
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218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 | 218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 | ||
U.S. 1043 (1984). | U.S. 1043 (1984). | ||