OBVIOUSNESS AS OF TODAY

                A recent precedential decision from the United States Court of Appeals for the Federal Circuit, In re Klein, discusses the obviousness of U.S. Patent Application No. 10/200,747 under 35 U.S.C. §103.  Inventor, Arnold G. Klein (“Klein”), appeals the final decision of the Board of Patent Appeals and Interferences (“Board”), which rejected certain claims provided in the patent application.  The invention, titled “Convenience Nectar Mixing and Storage Devices,” provides a means to easily proportion water to sugar ratios for hummingbirds, orioles, and butterflies.  While the ratios are not claimed as novel, the primary claim at issue is

[a] convenience nectar mixing device for use in preparation of sugar-water nectar . . . comprising: a container that is adapted to receive water, receiving means fixed to said container, and a divider movably held by said receiving means . . . .

The Board made five separate rejections under 35 U.S.C. §103 based on references to five prior U.S. patents.  The Board defines the issue Klein is seeking to solve with his device as a “compartment separation problem.”  The Board contends that keeping things separated is not novel to nectar mixing and storage devices, and “nothing about the prior art with adjustable, removable dividers is unique to their particular applications.”  Finally, the Board argues that nothing more than ordinary skill is required to solve the particular problem Klein is trying to solve; essentially, the invention is obvious.

35 U.S.C §103(a) provides:

[a] patent may not be obtained . . . if the differences between the subject matter sought to be patented and 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.

            The Court states that a determination of obviousness under §103 is ultimately a question of law, but is based on several underlying factual findings, including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the pertinent art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary factors, such as commercial success, long-felt need, and the failure of others.  However, a reference will only qualify as prior art for an obviousness determination under §103 when it is analogous to the claimed invention.

To determine whether prior art is analogous to the present invention, the court determines (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.

Klein argues that the Board erred when it determined the referenced patents—upon which the rejections were based—are “reasonably pertinent to the particular problem addressed by Klein.”  Three of the referenced inventions provide containers that aim to separate the contents put inside the container.  Conversely, Klein’s invention seeks to provide a means to mix the contents of the container.  Furthermore, none of the referenced containers are “adapted to receive water.”  The Court agrees that these distinctions render the references not “reasonably pertinent.”

The last two patents referenced by the Board provide containers that facilitate the mixing of two separated substances.  However, neither presents a container with moveable dividers capable of preparing different ratios like Klein’s invention.  The Court defined Klein’s problem as “making a nectar feeder with a moveable divider to prepare different ratios of sugar and water for different animals.”  Viewing the problem in this manner, an inventor would not consider either of the references because of their lack of moveable dividers and inability to prepare different ratios.  In conclusion, the last two references also fail as “reasonably pertinent” to Klein’s invention.

Because none of the references upon which the Board based their rejection were “reasonably pertinent,” the Court holds that the references are not analogous art.  Accordingly, the Board’s findings are not supported by substantial evidence and the rejections under 35 U.S.C. §103 cannot be sustained.

Credit to Ashley Meyer for this case summary.

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How Specific Should I Be With Written Descriptions in Patent Applications?

A recent United States Court of Appeals decision, Crown Packaging Technology, Inc. v Ball Metal Beverage Container Corporation, answers this question.  

In Crown, Ball Metal argued the Crown’s written description of US Patent Nos. 6,935,826 (‘826 patent’) and 6,848,875 (‘875 patent’) only covers driving a chuck outside
of the can end’s reinforcing bead (not inside, as well). Ball Metal stated Crown’s patent claims were not specific enough, stating Crown relied on the premise of saving metal more than the methods Crown used and the methods Crown did not use to make the product.

35 United States Code, section 112, states:

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

To determine sufficiency of the written description the court looks at whether the description is specific enough to allow “persons of ordinary skill in the art” to realize that the invention is
what the description claims it to be.

The court will consider whether the inventor had possession at the time the application was filed. Possession requires “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”

In the current case, Crown’s patents aim to correct two problems:

1. Reduce metal usage, and

2. Reduce scuffing to the can end wall.

The Court determined the correction of these two problems was specified in the written description as well as in the descriptive figures enough to indicate the methods Crown used to make the product.

In addition, the Court mentioned the Patent and Trademark Officer requested Crown
to file a divisional application and separate the method and product claims. To which the Court requires: “A patentee need only describe the product as claimed, and need not describe an unclaimed method of making the claimed product.” Therefore, Crown only needed to explain the method of making the product in the description, and did not need to anticipate methods Crown was not claiming in the patent to make the same product. 

Ms. Brittney Mestdagh created this case summary.

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IS THERE A DEADLINE ON WHEN AN INVENTOR CAN FILE A PATENT APPLICATION?

Yes.  Patentability, including certain deadlines, is primarily governed by the statute of 35 United States Code, section 102. 

This statute, at subsection (b), states that an inventor can not file a patent application if:

"...(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States..."

Also, in some countries, a patent application must be filed before it is first used or offered for sale.  Therefore, an inventor may want to file a patent application before (1) offering the invention for sale; (2) publicly using the invention; or (3) describing the invention in a printed publication.

Visit http://www.sayfiepatents.com/ or call Robert J. Sayfie at 888-468-0444.

Why Should I File a Trademark Application?

The benefits of federal trademark registration are:

1. Constructive notice nationwide of the trademark owner's claim;

2. Evidence of ownership of the trademark;

3. Jurisdiction of federal courts may be invoked;

4. Registration can be used as a basis for obtaining registration in foreign countries; and

5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Visit http://www.sayfiepatents.com/ or call Robert J. Sayfie at 1-888-468-0444 with your patent and trademark questions.

At what point in time do damages begin for patent infringement?

Typically, a non-provisional patent application is published eighteen (18) months after it is filed.  If someone is infringing a patentee's invention, damages based on a reasonable royalty rate begin on the publication date. 

However a patentee can not file a lawsuit in court until the patent issues.

The statute that governs the damages starting at the publication date, is 35 U.S.C. 154 - Contents and terms of patent; provisional rights.


(d) PROVISIONAL RIGHTS.-
(1) IN GENERAL.- In addition to other rights provided by this section, a patent shall include the right to obtain a reasonable royalty from any person who, during the period beginning on the date of publication of the application for such patent under section 122(b), or in the case of an international application filed under the treaty defined in section 351(a) designating the United States under Article 21(2)(a) of such treaty, the date of publication of the application, and ending on the date the patent is issued-

(A) (i) makes, uses, offers for sale, or sells in the United States the invention as claimed in the published patent application or imports such an invention into the United States; or


(ii) if the invention as claimed in the published patent application is a process, uses, offers for sale, or sells in the United States or imports into the United States products made by that process as claimed in the published patent application; and

(B) had actual notice of the published patent application and, in a case in which the right arising under this paragraph is based upon an international application designating the United States that is published in a language other than English, had a translation of the international application into the English language.


(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS.- The right under paragraph (1) to obtain a reasonable royalty shall not be available under this subsection unless the invention as claimed in the patent is substantially identical to the invention as claimed in the published patent application.


(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY.- The right under paragraph (1) to obtain a reasonable royalty shall be available only in an action brought not later than 6 years after the patent is issued. The right under paragraph (1) to obtain a reasonable royalty shall not be affected by the duration of the period described in paragraph (1).


(4) REQUIREMENTS FOR INTERNATIONAL APPLICATIONS-


(A) EFFECTIVE DATE.- The right under paragraph (1) to obtain a reasonable royalty based upon the publication under the treaty defined in section 351(a) of an international application designating the United States shall commence on the date of publication under the treaty of the international application, or, if the publication under the treaty of the international application is in a language other than English, on the date on which the Patent and Trademark Office receives a translation of the publication in the English language.


(B) COPIES.- The Director may require the applicant to provide a copy of the international application and a translation thereof

Call Robert J. Sayfie with your patent or trademark questions, or visit http://www.sayfiepatents.com/.

What is prior art that can make my invention not-patentable?

Prior art is described at 35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.  The statute recites:

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, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or
(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or

(f) he did not himself invent the subject matter sought to be patented, or

(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 (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. 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.

Call Robert at 1-888-468-0444 with your questions regarding patent or trademark law.  Or visit www.sayfiepatents.com.

How can I stop someone from importing my U.S. patented invention into the U.S.?

Answer: (1) sue them in Federal Court; or (2) File a complaint with the United States International Trade Commission (USITC).

A patent provides the patentee the right to prevent others from (1) making, (2) using, (3) selling, (4) offering for sale, or (5) importing the claimed invention.

Depending on circumstances, it may be more beneficial for a U.S. patentee to file a "337 Complaint" with the USITC.

A patentee should evaluate the different options available.

Visit http://www.sayfiepatents.com/.