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Patent Law Basics For The Nonpractitioner Part II Of IV UTILITY PATENTS

*This article is for non-practitioners seeking to familiarize themselves with the basics of patent types and patentability requirements. This article is Part II of a four part series. Parts III and IV will follow in biweekly installments, and will address Design Patents and Plant Patents, respectively.

Utility patents are the most common type of patent, and they're what laypersons are usually referring to when using the word "patent." For an invention to be patented, an item must fulfill three conditions: 1) it must possess utility, 2) it must be novel, and 3) it must be non-obvious. Thomas & Betts v. Panduit Corp.

138 F.3d 277, 283 (1998); see generally Kewanee Oil Co. v.

Bicron Corp., 416 U.S.

470, 480 (1974). Those inventions meeting such conditions are granted patent protection, which gives the inventor a twenty year monopoly on the manufacture or exploitation of the device. Id. The Utility Requirement: Of the three requirements of patentability, the utility requirement is the lowest bar and is easily met. For the most part, utility is used to prevent the patenting of inoperative devices such as perpetual motion machines (i.e.

: a machine that continues to move indefinitely without being driven or aided by an external source of energy). In making a rejection based on lack of utility, the examiner will, whenever possible, provide documentary evidence to support the finding. MPEP Section 2107(II)(C).

If documentary evidence is not available, the examiner will explain with specificity the scientific basis for his or her factual conclusions. Id. Specifically, the USPTO's Manuel of Patent Examining Procedure (the "MPEP") requires that a patent application express a specific and substantial utility. MPEP Section 2107(II)(B)(1)(i). This MPEP excludes "throw-away," "insubstantial," or "nonspecific" utilities. For instance, claiming that a complex invention is useful as landfill will not satisfy the utility requirement.

Id. However, if the applicant asserts that the claimed invention is useful for any particular practical purpose (i.e.: that the claimed invention has a "specific and substantial utility"), and the assertion would be considered credible by a person of ordinary skill in the art, the examiner must find that the utility requirement has been met.

MPEP Section 2107(II)(B)(1). Furthermore, even in the absence of such an assertion, if at any time during the examination it becomes readily apparent that the claimed invention has a well-established utility, the examiner must find that the utility requirement has been met. MPEP Section 2107(II)(A)(3). An invention has a well-established utility if (i) a person of ordinary skill in the art would immediately appreciate why the invention is useful based on the characteristics of the invention (e.

g., properties or applications of a product or process), and (ii) the utility is specific, substantial, and credible. Id.

The Atomic Energy Act of 1954 explicitly excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy in an atomic weapon. 42 U.S.C.

Section 2181(a). The Novelty Requirement: To be entitled to a patent, one must demonstrate that his or her proposed invention is novel. An invention is not novel, and therefore not patentable, if a prior art reference discloses every element of the asserted invention. See Lewmar Marine Inc. v. Barient, Inc.

, 827 F.2d 744, 747 (1987), cert. denied, 484 U.S.

1007 (1988). More specifically, under 35 U.S.C.

Section 102(b), if an invention "was . described in a printed publication in this or another country . more than one year prior to the date of application for patent in the United States," it has been "anticipated" and is therefore not entitled to a patent. Anticipation of invention requires that a prior reference disclose to one of ordinary skill in the art all elements and limitations of the patent claim. See Scripps Clinic & Research Foundation v. Genentech, Inc.

, 927 F.2d 1565, 1576 (1991). Additionally, anticipation requires that the prior art reference contain enough information to "enable" one of skill in the art to actually replicate and/or practice the invention. Therefore, for a prior art reference to enable the invention sought to be patented, the reference must place the invention in the possession of the public by enabling others to practice the invention. See In re Donohue, 766 F.2d 531, 533 (1985) ("Donohue II ").

"Such possession is effected if one of ordinary skill in the art could have combined the publication's description of the invention with his own knowledge to make the claimed invention." Id. Moreover, the use of additional references to establish that the anticipatory reference is enabling is legally permissible. Bristol-Myers Squibb Co. v.

Ben Venue Labs, 246 F.3d 1368, 1379 (2001). This is because the law of enablement presumes one acts with common sense and allows one skilled in the art to use commercially available, or otherwise known or readily available materials reported in the prior art, as starting points. See Bruning v. Hirose, 161 F.3d 681, 686 (1998).

The Non-Obviousness Requirement: Even if a proposed invention is novel, it may be denied patent protection if it is found to be obvious. The subject matter sought to be patented must be sufficiently different from what has been used or described in the past so as to be nonobvious to a person having ordinary skill in the area of technology relevant to the proposed invention. For example, the substitution of one color for another, or changes in size, are ordinarily not patentable. Specifically, 35 U.

S.C. Section 103(a) states: A patent may not be obtained. if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Invalidity based on obviousness is a question of law based on underlying facts.

See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); Panduit Corp.

v. Dennison Mfg. Co.

, 810 F.2d 1561, 1566-68 (1987). The relevant facts relate to (1) the scope and content of the prior art, (2) the level of ordinary skill in the field of the invention, (3) the differences between the claimed invention and the prior art, and (4) any objective evidence of nonobviousness, such as long felt need, commercial success, the failure of others, or copying.

Graham, 383 U.S. at 17; see also Continental Can Co. USA, Inc. v. Monsanto Co.

, 948 F.2d 1264, 1270 (1991). As the Federal Circuit outlined in Ruiz v. A.B.

Chance Co., 357 F.3d 1270, 1275 (2004), in making the assessment of differences between the prior art and the claimed subject matter, Section 103 specifically requires consideration of the claimed invention "as a whole." Inventions typically are new combinations of existing principles or features. Environmental Designs, Ltd. v.

Union Oil Co., 713 F.2d 693, 698 (1983) (noting that "virtually all [inventions] are combinations of old elements").

The "as a whole" instruction prevents evaluation of the invention part by part. Ruiz, 357 F.3d at 1275.

Without this important requirement, an obviousness assessment might successfully break an invention into its component parts, then find a prior art reference corresponding to each component. Id. This line of reasoning would import hindsight into the obviousness determination by using the invention as a roadmap to find its prior art components. Further, this improper method would discount the value of combining various existing features or principles in a new way to achieve a new result--often the essence of invention. Id. When a patent describes a new device that can be viewed as a new combination or arrangement of previously known and existing components, the legal conclusion of obviousness requires a showing that an artisan of ordinary skill in the art at the time of invention, confronted by the same problems as the inventor and with no knowledge of the claimed invention, would have selected the various elements from the prior art and combined them in the claimed manner.

Id. More particularly, there be some suggestion, motivation, or teaching in the prior art whereby the person of ordinary skill would have selected the components that the inventor selected and used them to make the new device. See Heidelberger Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.

3d 1068, 1072 (1994) ("When the patented invention is made by combining known components to achieve a new system, the prior art must provide a suggestion or motivation to make such a combination."); see also Northern Telecom, Inc. v.

Datapoint Corp., 908 F.2d 931, 934 (1990) (it is insufficient that prior art shows similar components, unless it also contains some teaching, suggestion, or incentive for arriving at the claimed structure); accord Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.

2d 1044, 1051-52 (1988) (it is impermissible to reconstruct the claimed invention from selected pieces of prior art absent some suggestion, teaching, or motivation in the prior art to do so); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143 (1985) (it is insufficient to select from the prior art the separate components of the inventor's combination, using the blueprint supplied by the inventor).

Furthermore, the suggestion or motivation to make the new combination must have existed before the proposed invention itself. See In re Rouffet, 149 F.3d 1350, 1355-56 (1998). Part III of this four part series will issue in two weeks, and will address Design Patents. **This article is for informational purposes only. This article does not constitute legal advice, and no attorney-client relationship exists between its reader and Zuber & Taillieu LLP or any of its attorneys.

If you seek legal advice in a particular matter, you should seek the counsel of a lawyer experienced in the relevant area of law, rendered with the lawyer's full knowledge of the facts relevant to such matter.

Mr. Zuber is a partner of Zuber & Taillieu LLP, where he specializes in IP transactions. He earned a J.D. from Columbia Law School, an M.P.P. from Harvard University, and a B.S. in engineering from Rutgers University, where he graduated with highest honors.



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