Written Description and Novelty - PowerPoint PPT Presentation

Loading...

PPT – Written Description and Novelty PowerPoint presentation | free to view - id: 3b583b-M2M1O



Loading


The Adobe Flash plugin is needed to view this content

Get the plugin now

View by Category
About This Presentation
Title:

Written Description and Novelty

Description:

Written Description and Novelty Intro to IP Prof Merges 1.22.09 ... – PowerPoint PPT presentation

Number of Views:21
Avg rating:3.0/5.0
Slides: 54
Provided by: lawBerkel
Category:

less

Write a Comment
User Comments (0)
Transcript and Presenter's Notes

Title: Written Description and Novelty


1
Written Description and Novelty
  • Intro to IP
  • Prof Merges 1.22.09

2
The Incandescent Lamp Patent
Incandescing conductor
Bamboo discovered as an incandescing conductor.
3
Claims page 262
  • 1. An incandescing conductor for an electric
    lamp, of carbonized fibrous or textile material
    and of an arch or horseshoe shape, substantially
    as hereinbefore set forth.

4
Sawyer and Mann Patent
Claimed All Fibrous and textile material
(6,000 plus embodiments)
Enabled Carbonized paper, plus?
5
Enablement Principles
The thing you have actually built picture claim
6
Enablement Principles
The limits of what you legally enable
The thing you have actually built picture claim
7
The Written Description Requirement
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
Gentrys Patent
8
US Pat. No. 5,064,244
9
Claim 1
  • A sectional sofa comprising
  • a pair of reclining seats disposed in parallel
    relationship with one another in a double
    reclining seat sectional sofa section being
    without an arm at one end . . . , each of said
    reclining seats having a backrest and seat
    cushions and movable between upright and reclined
    positions . . . ,

10
  • a fixed console disposed in the double reclining
    seat sofa section between the pair of reclining
    seats and with the console and reclining seats
    together comprising a unitary structure, said
    console including an armrest portion for each of
    the reclining seats said arm rests remaining
    fixed when the reclining seats move from one to
    another of their positions,

11
Claim 1 (contd)
  • and a pair of control means, one for each
    reclining seat mounted on the double reclining
    seat sofa section . . . .

12
(No Transcript)
13
(No Transcript)
14
(No Transcript)
15
(No Transcript)
16
Object of the invention language
17
From the specificiation
18
Casebook p. 177
  • In this case, the original disclosure clearly
    identifies the console as the only possible
    location for the controls. It provides for only
    the most minor variation in the location of the
    controls, noting that the control may be mounted
    on top or side surfaces of the console rather
    than on the front wall . . . Without departing
    from this invention.

19
  • The only discernible purpose for the console
    is to house the controls. As the disclosure
    states, identifying the only purpose relevant to
    the console, another object of the present
    invention is to provide . . . a console
    positioned between the reclining seats that
    accommodates the controls for both of the
    reclining seats.

20
Casebook, p. 177
  • Thus, locating the controls anywhere but on the
    console is outside the stated purpose of the
    invention.

21
  • Although not dispositive, because one can add
    claims to a pending application directed to
    adequately described subject matter, Sproule the
    inventor admitted at trial that he did not
    consider placing the controls outside the console
    until he became aware that some of Gentrys
    competitors were so locating the recliner
    controls.

22
Misappropriation by claim amendment
  • Merges, Software and Patent Scope A Report from
    the Middle Innings, 85 Tex. L. Rev. 1528 (2007).

23
Enabled?
24
See discussion n. 1 p. 178
  • What is the relationship between enablement and
    written description?

25
The Written Description Requirement
Scope of enablement vs. scope of that which you
have described
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
The term console does not cover a sofa section
having a seat back that folds down to serve as a
table top. (This was to distinguish Gentrys
sofa from prior art.) The Federal Circuit
limits the scope of the claim to cover sofas in
which the recliner control is located on the
console and invalidates 12 claims in the patent
under 112. The court affirmed that Berkline
had not infringed on Gentrys patent by
constructing reclining chairs separated by a
center seat whose back cushion pivoted to form a
table.
Original Claim Language
Prosecution History
Amended Claim Language
26
Gentry Gallery, contd
Canon 1 Claims should be interpreted such that
the preferred embodiment falls within their scope.
Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d
1473 (Fed. Cir. 1998).
Gentry was granted a patent for a sectional sofa
comprised of a pair of reclining seats that faced
the same direction. Claim 1, the broadest claim,
identifies a fixed console between the pair of
seats. Claims 9, 10, 12-15, and 19-21 are
directed to a sectional sofa in which the control
means are specifically located on the console.
The term console does not cover a sofa section
having a seat back that folds down to serve as a
table top. (This was to distinguish Gentrys
sofa from prior art.) The Federal Circuit
limits the scope of the claim to cover sofas in
which the recliner control is located on the
console and invalidates 12 claims in the patent
under 112. The court affirmed that Berkline
had not infringed on Gentrys patent by
constructing reclining chairs separated by a
center seat whose back cushion pivoted to form a
table.
Original Claim Language
Prosecution History
Amended Claim Language
27
Patent Specification
Enabled subject matter everything the inventor
teaches to one of skill in the art.
Enabled
Described embodiments of the invention
everything the inventor adequately describes to
one in the art everything the inventor shows she
is in possession of or contemplates as embraced
by her invention
Specification
Described
Claim 1 Original Application
Claim 2
Claimed in C-I-P or amended application
28
Specification Re-filed
If the inventor re-files the specification at a
later date, she cannot claim what the first
filing enabled but failed to describe.
Enabled
Described
Claim 1 Original Application
29
Whats claimable?
Dedicated to the Public
Competitor
Original Description
Competitor
Taught by Patent
Competitor
Claimable by original inventor
30
Gentry Gallery v. Berkline Corp.
Enabled 2 reclining seats in a sectional sofa
controls not located on arms of chair
Enabled
Specification for Gentry patent
Described pair of reclining seats in a
sectional sofa with a fixed console that houses
the control means
Described
Claim 1
Claimed pair of reclining seats in a sectional
sofa, a fixed console, and a pair of controls.
31
Novelty 102
A person is not entitled to a patent if the
invention was
in the prior art (as defined by 102 (a), (e),
(g))
barred under 102 (b), (c), (d)
32
CLAIM 1 ELEMENTS
Rotating handle at end of bar
U-shaped bar
Cutting element attached to bar
Base, with passageway
33
Sample Publication
Cheese Industry Today
New Trends in Slicers by J. Smith
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient For
tightened wire designs,
cutting bar shapes U-shaped,
new cutting elements
tightened wire
passageway in the base.
attached to the bar
tightening can be achieved by rotating the
handle.
34
Cheese Industry Today
New Trends in Slicers by J. Smith
NO PATENT GRANTED
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient For
tightened wire designs,
NOVELTY REQUIREMENT NOT MET
cutting bar shapes U-shaped,
new cutting elements
tightened wire
attached to the bar
passageway in the base.
tightening can be achieved by rotating the
handle.
Claim Elements
Claim Elements in Publication
Rotating handle at end of bar
Rotating handle at end of bar
Cutting element attached to bar
Cutting element attached to bar
Base, with passageway
Base, with passageway
U-shaped bar
U-shaped bar
35
Sample Publication Revised
Cheese Industry Today
New Trends in Slicers by J. Smith
________________ New innovations
_______________________________ ______________var
ious
round, and____ . ______________
_______ Exciting
stainless steel blades,
, ___________ ________
____________________
. The wire slides into a convenient
cutting bar shapes U-shaped,
new cutting elements
tightened wire
passageway in the base.
attached to the bar
36
Invention Compared with Prior Art
Rotating handle at end of bar
Cutting element attached to bar
Base, with passageway
U-shaped bar
Smith Article
X
X
X
Jones Patent
X
X
Adams Slicer
X
X
INVENTION NOT ANTICIPATED
NOVELTY REQT MET PATENT GRANTED
37
Novelty (Anticipation) 102(a) Versus
Statutory Bars 102(b)
  • Novelty/Anticipation concerned with NEWNESS is
    it original to the patent applicant/patentee?
  • Statutory Bars concerned with TIMELINESS did
    the inventor file soon enough?

38
Critical Concept the Critical Date
The Invention Date
39
Critical Concept the Critical Date
The Invention Date
The Prior Art
40
Earlier Invention, Earlier Critical Date, LESS
PRIOR ART
The Invention Date
The Prior Art
41
Novelty Critical Date Example
Reduction to practice 7/12/1886
Filed 6/7/1889
Conception Summer 1886
Unpacking the invention date
42
Rosaire v. Baroid
43
Palestine, Texas
44
(No Transcript)
45
Horvitz publications
  • Horvitz, L., 1939. On Geochemical Prospecting.
    Geophysics, V. 4, No. 3, pp. 210-228. Horvitz,
    L., 1945. Recent Developments in Geochemical
    Prospecting for Petroleum. Geophysics, V. 10, pp.
    487-493. Horvitz, L., 1950. Chemical Methods.
    In J.J. Jakosky (Editor), Exploration Geophysics
    (2d ed.). Trija Publishing, Los Angeles, pp.
    938-965. Horvitz, L., 1969. Hydrocarbon
    Geochemical Prospecting After Thirty
    YearsHorvitz, L., 1972. Vegetation and
    Geochemical Prospecting for Petroleum. AAPG
    Bull., V. 56, pp. 925-940. Horvitz, L., 1985.
    Near-surface Hydrocarbons and Non-hydrocarbon
    Gases in Petroleum Exploration. Presented at
    Asso. Petrol. Geochem. Explor. AAPG Rocky
    Mountain Section, Denver, Colo., June, 1985.

46
Rosaire v Baroid
  • Section 102(a) A person shall be entitled to a
    patent unless
  • (a) The invention was known or used by others in
    this country, or patented or described in a
    printed publication in this or a foreign country,
    before the invention thereof by the applicant for
    patent.

47
  • The invention was known or used by others in this
    country
  • - Note the national limitation here
  • What does it mean to be known or used?
  • Why was Teplitz teams use not enough by itself
    to anticipate?

48
Rosaire (contd)
  • Rosaires argument
  • Top of p. 404
  • Courts response --

49
Rosaire v Baroid
  • With respect to the argument advanced by
    appellant that the lack of publication of
    Teplitz's work deprived an alleged infringer of
    the defense of prior use, we find no case which
    constrains us to hold that where such work was
    done openly and in the ordinary course of the
    activities of the employer, a large producing
    company in the oil industry, the statute is to be
    so modified by construction as to require some
    affirmative act to bring the work to the
    attention of the public at large.

50
In re Hall
  • Section 102(b) case
  • But same standard for publication under 102(a)
    and 102(b)
  • See Rosaire case
  • Reissue patent application
  • Protest during reissue

51
Foldi Thesis -- Freiburg
52
Freiburg
53
Evidence of publicness
  • Index cataloguing
  • Open to public
About PowerShow.com