Intellectual Property

							Intellectual Property

   Boston College Law School
       February 18, 2009
    Patent – Nonobviousness
               Requirements
•   (1) Patentable Subject Matter
•   (2) Novelty
•   (3) Utility
•   (4) Nonobviousness
•   (5) Enablement
             Nonobviousness
• 35 U.S.C. § 103. Conditions for
  patentability; non-obvious subject matter.
  – “A patent may not be obtained though the invention is
    not identically disclosed or described as set forth in
    section 102 … 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 …”
                 Nonobviousness
• Factors in the analysis
  –   (1) Scope and content of prior art
  –   (2) Differences between invention and prior art
  –   (3) Level of ordinary skill in the art
  –   (4) “Secondary considerations”
       •   Commercial success
       •   Long-felt but unsolved needs
       •   Failure of others to invent
       •   Copying by others
KSR v. Teleflex
In re Dembiczak
                    Problem 3-10
• Claimed invention
   – Lollipop in shape of human thumb
   – Wrapped in a mold that can be worn
   – Contains gum inside lollipop
• Prior art references
   – Siciliano: ice cream wrapped in a
     removable mold
   – Copeman: lollipops in various molds
     usable as balloons
   – Harris: hollow, thumb-shaped lollipop
   – Webster: chewing gum enclosing liquid
     syrup
              Nonobviousness
• Secondary considerations
  –   Commercial success
  –   Long-felt but unsolved needs
  –   Failure of others to invent
  –   Copying by others
               Requirements
•   (1) Patentable Subject Matter
•   (2) Novelty
•   (3) Utility
•   (4) Nonobviousness
•   (5) Enablement
                  Enablement
• 35 U.S.C. § 112. Enablement
  – “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.”
            Approval Process
•   File application w/ PTO
•   Review by PTO for patentability
•   Back and forth between applicant and PTO
•   Publication of some patent applications
•   Issuance or rejection of patent
•   Appeal to review board, CAFC
•   Reexamination procedure
Sample Patent
                       Edison




• Sawyer & Man claim
  – (1) An incandescing conductor for an electric lamp, of
    carbonized fibrous or textile material …
                  Enablement
• 35 U.S.C. § 112. Enablement
  – “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.”
      Gentry Gallery v. Berkline




• A sectional sofa comprising: …
   – a pair of reclining seats disposed in parallel …
   – a fixed console disposed in the double reclining seat section
     between the pair of reclining seats …
   – and a pair of control means, one for each reclining seat; mounted
     on the double reclining seat sofa section
Berkline Sofa
             Administrative
• Next Assignment
  – Read IV.C.1 and 2
  – Into IV.C.3 – Doctrine of Equivalents
     • Through Festo