Novelty

Novelty

By Dr. Rao Vepachedu(1), PhD, JD, LLM

Novelty is the quality of being new(2). However, this simple and clear definition is the tip of the iceberg of a complexity that confuses all. For example, a “novelty item” is a novel object sold for its uniqueness and fancy qualities, rather than for its use. An article of trade whose value is chiefly decorative, comic, or the like and whose appeal is often transitory(3). If a novel object has a practical use, i.e., it is novel and useful, it is not a “novelty item,” but a “novel item.” The Supreme Court of United States (SCOTUS)(4) adds more complexity for the good of economy(5).

In the world of patents, novelty is a requirement for patentability. A “novel item” may be a “patentable invention,” if it is not only useful and novel, but also non-obvious. In other words, if an article has 1) utility(6), 2) novelty(7) and 3) non-obviousness(8) or inventive step(9), it is a patentable invention.

Accordingly, novelty under the patent law seeks to ensure that a patent will not issue if the public already possesses the invention. Although it is usually straightforward, it can be difficult for alleged inventions in complex fields like biotechnology, chemistry, and pharmaceuticals, for various reasons including, but not limited to, from incompetent and confused examiners to conniving and dishonest inventors who rewrite ancient technology in modern terminology using a major loophole in the system, i.e., inventor is lexicographer, which is supported by the case law to confuse and to destroy the clarity of even the most well defined technical terms. An applicant is given the opportunity to be a lexicographer and to rebut the presumption that claim terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term that is completely different from its ordinary and customary meaning and could misrepresent the whole technology. For example, if an applicant defines, the term “rose” as defined herein represents any flower that has a pungent odor; and then claims, “I claim a rose.” What is an examiner to do?

What’s in a name? That which we call a rose by any other name would smell as sweet.” Romeo and Juliet (II, ii, 1-2)

There are a ton of real examples in the patent literature, such as in US 20150183988 A1 (Becker et al.), wherein the applicant University of Akron claims:

1. A covalently crosslinked hydrogel comprising the strain-promoted reaction product of an 8-member cycloalkyne functionalized polyalkylene glycol and a multi-arm glycerol exytholate triazide. Novelty 1

What is an “exytholate?” Is it a typo? Of course, it is not, because the applicant uses this new word in publications (Zheng et al., Strain-Promoted Crosslinking of PEG-based Hydrogels via Copper-Free Cycloaddition, ACS Macro Lett. 2012 Aug 21; 1(8): 1071–1073) and patent applications uniformly, without ever defining it verbally. It is “ethoxylate” but intentionally written as “exytholate,” with a specific purpose. However, it is a legitimate exercise of the rights of applicant to be a lexicographer to create new words, upheld and reinforced by the American courts. Fortunately, the structures provided and the glycerol ethoxylate triazide shown in NMR Fig 10, para [0049], produced from glycerol ethoxylate at [0106], gives away the secret of the enigmatic new word “exytholate.”

Unfortunately, there is no procedure to make “glycerol exytholate triazide.” What is the purpose of this new “chemically incorrect, improper and dyslexic” word “exytholate,” when there is a chemically correct “ethoxylate” word derived from “ethoxy”? Why did the University of Akron create this improper dyslexic word? How does one “exit-hole-ate” “glycerol ethoxylate triazide” to make “glycerol exytholate triazide?”

Thanks to such lexicographers, interpretation of statements in a written description of a patent is a difficult task, due to an inherent tension between the two possibilities, a clear lexicographic definition and a description connived by the lexicographer inventor. The difficulty is in the interpretation of claims ‘in view of the specification’ without importing limitations from the specification into the claims. This tension is further complicated by a patent system with ambiguous statutes, confusing case law, conniving inventors and trolls, incompetent and deceptive patent preparers and examiners(10), and “jury and judges(11).”

As the USPTO tries to improve the quality of the patents granted, the examiners are playing it safe by taking the easy route of obviousness rejections. As a result, an inventor lexicographer can obtain a patent for an ancient technology rewritten in modern terminology. Because the claimed invention is not identically disclosed (using different terminology) and patentability shall not be negated by the manner in which the invention was made, the examiner considers that the alleged invention is “novel” under 35 USC section 102. This is a win for the conniving inventor or troll, because 1) the anticipatory reference is considered by the USPTO, 2) it has been declared “not anticipatory,” by finding the alleged invention to be novel over the (anticipatory) reference, and 3) as a result, during later litigation the reference may lose its value because it was already considered by the USPTO during patent prosecution.

However, Under 35 USC 103 patent for a claimed invention may not be obtained, notwithstanding that it being novel, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. The US patent examiner would reject the claim as being obvious over the ancient technology, intentionally or incompetently failing to recognize the “inherent anticipation.” The inventor lexicographer can easily overcome the obviousness rejection during the prosecution, by providing evidence of comparative data, even if it were not presented in the application submitted on the effective filing date. In addition, patent examiners look only to the problem the patentee was trying to solve, assuming that a person having ordinary skill in the art (PHOSITA) attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem, and conclude that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try’ because they are worried about falling prey to hindsight bias, thereby losing the (precious and uncommon commodity) commonsense(11), if any. The SCOTUS’s admonition to the CAFC for failure to preserve the commonsense together with the familiar framework for determining obviousness (as set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966)) is on deaf ears, so far.

Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment(12). However, the USPTO examiners fail to recognize the pertinent prior art that claims read on when a broader interpretation was given or inherency was considered, forced by the blinder-guidelines provided to them by the USPTO, requiring exact terminology. As a result, instead of taking the ordinary and customary meaning of a claim term, which is the meaning that the term would have to a PHOSITA in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application(13); the examiners find very narrow and exacting language in prior art to reject claims under the easy-to-overcome obviousness paradigm, instead of explicit or inherent anticipation, allowing illegal monopolies over the matter available in the public domain, depriving the public from availing the free knowledge in the public domain; contrary to the Constitutional mandate and the purpose of patent regimes across the world.

The combination of such blinders and lack of commonsense is the recipe for disastrous results, in general; and in patent prosecution, in particular. As a result, the patents granted by the USPTO are inferior in many aspects and invalid, yet with the presumption of validity attached, resulting in litigation.

To address some of the problems associated with the American patent system, president Obama signed the America Invents Act in 2011 that came into force incrementally, resulting in the partial integration of the US patent law with the rest of the world on March 16, 2013. For the first time in the history of U.S. patent law, to improve the patent quality, the AIA now allows third parties to submit pre-grant submissions and post-grant review(14). However, so long as the examiners at the USPTO are confused about anticipation and obviousness, and fail to use anticipation for the fear that they might commit the crime of “stretching(15)” the prior art to fit the claim, no matter how many 3rd party submissions pertinent and anticipatory are submitted, the quality of the patent grant will remain poor and encroaches upon the free public domain.

Examples of such failure of the USPTO in recognizing anticipation can be seen in the obviousness rejections in an umpteen number of PCT applications(16).

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Novelty: References and Notes:

(1) Dr. Rao Vepachedu is the Managing Director at Cardinal Risk Management and registered patent attorney with extensive experience in the management of intellectual property and extensive experience in research and teaching. He currently works for Cardinal Intellectual Property (CIP), Cardinal Risk Management (CRM), and Cardinal Law Group (CLG). In addition, he is the president of Vepachedu Educational Foundation Inc. (www.vepachedu.org), a 501(c) (3) educational foundation. For more information visit: www.linkedin.com/in/vepachedu; http://www.avvo.com/attorneys/60201-il-sreenivasarao-vepachedu-764535.html, and http://www.crm-ip.com/vepachedu.html. Contact: svepachedu@yahoo.com or rao.vepachedu@cardinal-ip.com: www.linkedin.com/in/vepachedu and http://www.crm-ip.com/vepachedu.html;

Novelty 2http://www.avvo.com/profile/dashboard.

(2) See also novelty definition at Merriam-Webster: http://www.merriam-webster.com/dictionary/novelty

(3) See for more on Novelty Items: https://en.wikipedia.org/wiki/Novelty_item; Definition 3: http://dictionary.reference.com/browse/novelty?s=t

(4) The Supreme Court is the highest tribunal in the nation for all cases and controversies arising under the Constitution or the laws of the United States. The Court stands as the final arbiter of the law and guardian of constitutional liberties. This includes defining words like “novelty,” for example. See also: http://www.supremecourt.gov/about/about_us.aspx

(5) An invention cannot be patented if it is known, published, or patented. 35 U.S.C. § 102(a). The Supreme Court of the United States opined that it is “to find a balance between promoting innovation and allowing the public to use and perfect the invention for the good of the economy.” Bilski v. Kappos, 130 S. Ct. 3218, 3252-53 (2010).

(6) Utility:

35 U.S.C. 101   Inventions patentable.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

As interpreted by the Federal courts, 35 U.S.C. 101 has three purposes. First, 35 U.S.C. 101 limits an inventor to ONE patent for a claimed invention. If more than one patent is sought, a patent applicant will receive a statutory double patenting rejection for claims included in more than one application that are directed to the same invention. See MPEP § 804. Second, 35 U.S.C. 101 defines which categories of inventions are eligible for patent protection. An invention that is not a machine, an article of manufacture, a composition or a process cannot be patented. See Diamondv.Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980); Diamondv.Diehr, 450 U.S. 175, 209 USPQ 1 (1981); In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed. Cir. 2007). Third 35 U.S.C. 101 serves to ensure that patents are granted on only those inventions that are “useful.” This second purpose has a Constitutional footing — Article I, Section 8 of the Constitution authorizes Congress to provide exclusive rights to inventors to promote the “useful arts.” See Carl Zeiss Stiftungv.Renishaw PLC, 945 F.2d 1173, 20 USPQ2d 1094 (Fed. Cir. 1991). Thus, to satisfy the requirements of 35 U.S.C. 101, an applicant must claim an invention that is statutory subject matter and must show that the claimed invention is “useful” for some purpose either explicitly or implicitly. Application of this latter element of 35 U.S.C. 101 is the focus of these guidelines.

Under PCT Article 33(4), a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry. “Industry” shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.

(7) Novelty:

35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.

(a) NOVELTY; PRIOR ART.–A person shall be entitled to a patent unless–

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.–

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.–A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if–

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.–A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if–

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) COMMON OWNERSHIP UNDER JOINT RESEARCH AGREEMENTS.–Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if–

(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS PRIOR ART.–For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application–

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

Under PCT Article 33(2), a claimed invention shall be considered novel if it is not anticipated by the prior art as defined in the Regulations.

Under EPO Article 54, (1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

(3) Additionally, the content of European patent applications as filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

(4) Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.

(5) Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art.

(8) Non-Obviousness

35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

[Editor Note: Applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 103 (pre-AIA) for the law otherwise applicable.]

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 , if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511; subsection (c) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4807); subsection (c) amended Dec. 10, 2004, Public Law 108-453, sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(c) (effective March 16, 2013), 125 Stat. 284.)

(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) provided that tax strategies are deemed to be within the prior art (see AIA § 14 ).)

(9) Inventive step:

Under PCT Article 33(3), a claimed invention shall be considered to involve an inventive step if, having regard to the prior art as defined in the Regulations, it is not, at the prescribed relevant date, obvious to a person skilled in the art.

Under EPO Chapter VII – Inventive step:

1. An invention is considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the Art. Novelty (see G‑IV, 5) and inventive step are different criteria. The question – “is there inventive step?” – only arises if the invention is novel.

2. The “state of the art” for the purposes of considering inventive step is as defined in Art. 54(2) (see G‑IV, 1). It is to be understood as concerning such kind of information as is relevant to some field of technology (see T 172/03). It does not include later published European applications referred to in Art. 54(3). As mentioned in G‑IV, 3, “date of filing” in Art. 54(2), means date of priority where appropriate (see F‑VI). The state of the art may reside in the relevant common general knowledge, which need not necessarily be in writing and needs substantiation only if challenged (see T 939/92).

3. The “person skilled in the art” should be presumed to be a skilled practitioner in the relevant field of technology, who is possessed of average knowledge and ability and is aware of what was common general knowledge in the art at the relevant date (see T 4/98, T 143/94 and T 426/88). He should also be presumed to have had access to everything in the “state of the art”, in particular the documents cited in the search report, and to have had at his disposal the means and capacity for routine work and experimentation which are normal for the field of technology in question. If the problem prompts the person skilled in the art to seek its solution in another technical field, the specialist in that field is the person qualified to solve the problem. The skilled person is involved in constant development in his technical field (see T 774/89 and T 817/95). He may be expected to look for suggestions in neighbouring and general technical fields (see T 176/84 and T 195/84) or even in remote technical fields, if prompted to do so (see T 560/89). Assessment of whether the solution involves an inventive step must therefore be based on that specialist’s knowledge and ability (see T 32/81). There may be instances where it is more appropriate to think in terms of a group of persons, e.g. a research or production team, rather than a single person (see T 164/92 and T 986/96). It should be borne in mind that the skilled person has the same level of skill for assessing inventive step and sufficient disclosure (see T 60/89, T 694/92 and T 373/94).

4. Thus the question to consider, in relation to any claim defining the invention, is whether before the filing or priority date valid for that claim, having regard to the art known at the time, it would have been obvious to the person skilled in the art to arrive at something falling within the terms of the claim. If so, the claim is not allowable for lack of inventive step. The term “obvious” means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art. In considering inventive step, as distinct from novelty (see G‑VI, 3), it is fair to construe any published document in the light of knowledge up to and including the day before the filing or priority date valid for the claimed invention and to have regard to all the knowledge generally available to the person skilled in the art up to and including that day.

In order to assess inventive step in an objective and predictable manner, the so-called “problem-and-solution approach” should be applied. Thus deviation from this approach should be exceptional.

5. In the problem-and-solution approach, there are three main stages:

(i)determining the “closest prior art”,

(ii)establishing the “objective technical problem” to be solved, and

(iii)considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.

5.1 Determination of the closest prior art

5.2 Formulation of the objective technical problem

5.3 Could‑would approach

5.4 Claims comprising technical and non‑technical aspects

6. In the context of the problem-solution approach, it is permissible to combine the disclosure of one or more documents, parts of documents or other pieces of prior art (e.g. a public prior use or unwritten general technical knowledge) with the closest prior art. However, the fact that more than one disclosure must be combined with the closest prior art in order to arrive at a combination of features may be an indication of the presence of an inventive step, e.g. if the claimed invention is not a mere aggregation of features (see G‑VII, 7). See for more information: http://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vii.htm

(10) Last year, the Washington Post reported that some of the 8,300 patent examiners repeatedly lied about the hours they were putting in, and many were receiving bonuses for work they didn’t do, and the top agency officials ensured that cheaters were protected. See, Quantity over Quality at the USPTO, The Andhra Journal of Industrial News, Issue 135, August 1, 2015: http://www.vepachedu.org/AJIN/AIJN-135.pdf

(11) In In re Zletz, the examiner and the Board had interpreted claims reading “normally solid polypropylene” and “normally solid polypropylenehaving a crystalline polypropylene content” as being limited to “normally solid linear high homopolymers of propylene which have a crystalline polypropylene content.” The court ruled that limitations, not present in the claims, were improperly imported from the specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).

(11) The Supreme Court in KSR, 550 U.S. at 404, 82 USPQ2d, reaffirmed the familiar framework for determining obviousness as set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). However, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art.”

The Supreme Court stated that the Federal Circuit had applied the teaching-suggestion-motivation (TSM) test in an overly rigid and formalistic way (KSR, 550 U.S. at 404, 82 USPQ2d at 1391) and erred in four ways: (1) “by holding that courts and patent examiners should look only to the problem the patentee was trying to solve ” (Id. at 420, 82 USPQ2d at 1397); (2) by assuming “that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem” (Id.); (3) by concluding “that a patent claim cannot be proved obvious merely by showing that the combination of elements was ‘obvious to try’” (Id. at 421, USPQ2d at 1397); and (4) by overemphasizing “the risk of courts and patent examiners falling prey to hindsight bias” and as a result applying “[r]igid preventative rules that deny fact finders recourse to common sense.”

(12) Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004).

(13) Phillips v. AWH Corp.,415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc); Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67 USPQ2d 1438, 1441 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 67 USPQ2d 1132, 1136 (Fed. Cir. 2003); Ferguson Beauregard/Logic Controls v. Mega Systems, 350 F.3d 1327, 1338, 69 USPQ2d 1001, 1009 (Fed. Cir. 2003); ACTV, Inc. v. The Walt Disney Company, 346 F.3d 1082, 1092, 68 USPQ2d 1516, 1524 (Fed. Cir. 2003); E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d 1364, 1368, 67 USPQ2d 1947, 1949 (Fed. Cir. 2003)

The ordinary and customary meaning of a term may be evidenced by a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Phillips v. AWH Corp., 415 F.3d at 1314, 75 USPQ2d at 1327. If extrinsic reference sources, such as dictionaries, evidence more than one definition for the term, the intrinsic record must be consulted to identify which of the different possible definitions is most consistent with applicant’s use of the terms. Brookhill-Wilk 1, 334 F.3d at 1300, 67 USPQ2d at 1137; see also Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) (“Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings.”) and Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1583, 39 USPQ2d 1573, 1577 (Fed. Cir. 1996) (construing the term “solder reflow temperature” to mean “peak reflow temperature” of solder rather than the “liquidus temperature” of solder in order to remain consistent with the specification.). If more than one extrinsic definition is consistent with the use of the words in the intrinsic record, the claim terms may be construed to encompass all consistent meanings. See e.g., Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342, 60 USPQ2d 1851, 1854 (Fed. Cir. 2001) (explaining the court’s analytical process for determining the meaning of disputed claim terms); Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999) (“[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning.”). Compare MSM Investments Co. v. Carolwood Corp., 259 F.3d 1335, 1339-40, 59 USPQ2d 1856, 1859-60 (Fed. Cir. 2001) (Claims directed to a method of feeding an animal a beneficial amount of methylsulfonylmethane (MSM) to enhance the animal’s diet were held anticipated by prior oral administration of MSM to human patients to relieve pain. Although the ordinary meaning of “feeding” is limited to provision of food or nourishment, the broad definition of “food” in the written description warranted finding that the claimed method encompasses the use of MSM for both nutritional and pharmacological purposes.); and Rapoport v. Dement, 254 F.3d 1053, 1059-60, 59 USPQ2d 1215, 1219-20 (Fed. Cir. 2001) (Both intrinsic evidence and the plain meaning of the term “method for treatment of sleep apneas” supported construction of the term as being limited to treatment of the underlying sleep apnea disorder itself, and not encompassing treatment of anxiety and other secondary symptoms related to sleep apnea.).

(14) IP and National Competitiveness: http://www.cardinal-ip.com/ip-news-strategy/ip-and-national-competitiveness/

(15) “Stretching” is a crime committed by a patent examiner while reviewing the prior art in rejecting a claim in question. The dictionary meaning of stretch is “to draw out or extend to the full length or extent” (The meaning at: http://dictionary.reference.com/browse/stretch). One might wonder why such extension of a piece of prior art to its fullest extent is crime. However, there is another meaning of stretch, “to extend, force, or make serve beyond the normal or proper limits” (the last meaning at: http://dictionary.reference.com/browse/stretch).   This is the stretch that examiners are afraid of, for all the reasons and fears such as “hindsight” and looking through the “blinders” put on. The question remains to be answered, despite the SCOTUS’es clear dictate to use commonsense and not to limit for fear of hindsight.

Examples of such “full extent stretching” confused with “beyond proper limits stretching” are too many, because it is subjective and requires case-by-case analysis in view of conniving lexicographer invention.

(16) PCT/US2014/054717 (WO2015035361)

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