- subject matter
- utility
35 USC 112:
PHOSITA (person having obvious skill in the art)
enablement:
incandescent lamp patent
"the object of this [written description] requirement is to apprise the
public of what the patentee claims as his own, the courts of what they
are called upon to construe, and competing manufacturers and dealers
of exactly what they are bound to avoid... if the description be so
vague and uncertain that no one can tell, except by independent
experiments, how to construct the patented device, the patent is void."
written description requirement
gentry gallery v. berkline
if it's not whether a PHOSITA can look at the claims and say,
"oh now i can look at this and make this sofa,"
then what is it?
the opinion says that he didn't even that there could be a possibility
of moving the console to another part of the sofa.
so then why if he had the fortuity of drafting claims that were
broader than possibly meant, then why should we limit it to
just what was in his head?
because someone else then invented the product.
why does this matter?
it just so happens that the claim happens to include claims that
the patentee hadn't considered,
including this better way of doing things. why should we care that the inventor is getting more than he had even realized?
gentry hadn't thought about the fact that these sofas could have the console placed anywhere.
but a general principle of patents is that we are giving a monopoly, and we don't want to give a larger one than deserved or than we have to.
so maybe this is the bar between us as the society and inventor as patentee.
enablement says to patentee "if you want this right, you're going have to give us something in exchange. you have to give up the goods. can't hide the ball, you have to give something up, and you have to tell us all how this is done so that when the limited period of monoploy is done, its in the public domain and we can see how it's done because the patent shows us.
written description looks at this phenomenon from the other side and says, "we're giving you an exclusive right for a period of time. we're going to be jealous of what we're giving up and we certainly don't need to give you a patent for something you didn't even realize you cold do. you didn't give up goods cause you were trying to keep them, you didn't give up goods because you werent' even in posession of them. if you didn'thave them, why should we reward you???"
the core difference between the requirements:
enablement -- has the inventor given us enough/ taught us how to practice to be able to patent the invention?
written description -- was the inventor in possession/ the creator of of the invention?
the ultimate test is this possession question: would a PHOSITA be able to say, "oh it's clear that you're in possession of this information, and i can recreate it from the patent?"
new and useful process
35 USC 102 deals with the "new" and 103 deals with the "XX"
s. 102 basically embodies the principle that ONLY TRULY NEW INVENTIONS DESERVE PATENTS
section 102 has to do with NOVELTY (in the positive, novelty is "new compared to the prior art"; in the negative, "what has been done previously by persons other than the patent applicant") and STATUTORY BARS (the ways the inventor for herself can remove the invention from patentability)
Novelty under § 102: things done by persons other than the inventor at times prior to the date of invention by the patentee
Sec. 102(a) –
Sec. 102. - Conditions for patentability;
novelty and loss of right to patent
A person shall be entitled to a patent unless -
(a) the invention was [publicly] known or [publicly] 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
(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another before the invention thereof by the applicant for patent
(f) he did not himself invent the subject matter sought to be patented, 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.
ANTICIPATION.
a person shall be entitled unless the invention was known/used by others before the applicant invented them. at any point prior to the date of filing, has someone other than the inventor somewhere in the US known about or actually used the invention? this can be extremely broad...
Egbert v. Lippmann (1881):
Barnes' girlfriend was complaining about her corset steels. hearing this complaint, he created steels that could slide against each other and be more secure and comfortable. he gave these to his girl in 1855, and then in 1858. in 1863, Barnes took the steels and showed them to Sturgess and explained how they work and then barnes applied for a patent in 1866 (having slept on his rights for 11 years)... of course by the time he files, other people have figured out how to make the steels and there's a whole change to the corset making industry. barnes thinks he can take what the industry is doing and get paid off of it by patenting, since he was the first to come up with the idea. barnes dies and his widow sues Lickman (a corset manufacturer) for the deceased husband's patent.
the patent was applied for in march 1866 and the statutory mark at the time was 2 years prior to date of application: must as whether the invention was in public use in US more than 2 years prior to 1866.
what evidence is there to show that the corsets were sold before march 1864? none.
what other evidence shows that they were in public use before march 1864? barnes clearly hadn't tried to keep this secret.
if you share with one person, not for experienmentation, but when it's complete and the benefits can be shared with everyone, then you won't get the benefits of patenting because you've waited to long and we don't want to incentivize withholding the invention from the public.
the whole purpose of the patent system is to encourage new technology. victorian women would have been better off if they had had stays in 1850s instead of 1860s.
"The public use of an invention for more than two years before application, even without his consent and allowance, renders the letters-patent therefor void. To constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used. The use of a great number may tend to strengthen the proof, but one well-defined case of such use is just as effectual to annul the patent as many. If an inventor sells a machine of which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one."
when you have the invention and try to hold onto an exclusivity longer than patent would allow, the statutory bars will not allow this. you will be barred forever.
see 102(a) - someone other than the applicant
see 102(b) - statutory bar is in spite of the applicant
In re Hall p.192: **notice the dates!**
public accessibility is the touchstone in determining whether a reference constitutes a printed publication.
Nov. 1977 -- the printed graduate dissertation became available in a W. Germany university, but would not have been available in the US at this time
Feb 1979 -- the Hall patent application is filed in DC and Hall has never been exposed to the dissertation
does the dissertation bar the patent under 102(a)? NO.
does the dissertation bar the patent under 102(b)? YES. this is not Rosaire, this is two independent people coming up with the same idea. and the uncatalogued dissertation is going to bar the patent of an inventor in the US.
why do we do this?
when looking at 102(a) and (b), keep the dates in mind!!
Retention of control over the use is key.
(f) he did not himself invent the subject matter sought to be patented, or
Statutory Bars
rather than invention date, look tot he filing date of the application. if any criteria fail on this, the patent should not be granted.
§102(b), (c), and (d) are statutory bars to patenting.
§102(b), (c), and (d) are statutory bars to patenting.
Sec. 102(b) – Inquiry is on the actions of the inventor and others more than one year prior to the date the application was filed
Sec. 102. - Conditions for patentability; novelty and loss of right to patent
A person shall be entitled to a patent unless -
(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.
ANTICIPATION.
a person shall be entitled unless the invention was known/used by others before the applicant invented them. at any point prior to the date of filing, has someone other than the inventor somewhere in the US known about or actually used the invention? this can be extremely broad...
“Used by Others”
Rosaire v. Baroid Sales Div., Nat'l Lead Co. (1955): they were given patents for a process of oil processing. but it turns out that they were not the first people to think of this idea, and it turns out that a technis had done some oil processing and had developed and used a similar method in the field prior to the invention of the method by rosaire. but tempis didn't publish, and there's no evidnece that anyone knew of what they were doing just because it hadn't been heard of or seen or really cared about.
does the practice of this method in the field, unknown to anyone but employed before the patent application, void Rosaire's patentability?
thinking back to trade secrets, we look at how many people other than the inventor know about the product or secret. if Rosaire was claiming a trade secret and only said that tempis knew about it, there would be no problem defending the trade secret. why is there a problem here? what is the effect of invalidating the patent?
patents are supposed to give something to society. so here, we have to draw the line between the private rights of patentees, and the public rights of society. we are very protective of the public domain's rights -- we want to be sure we're getting the benefit of the bargain, and we don't want to enrich someone who puts things into the public domain that we don't need. clearly, if Rosaire was taking a procedure that any Joe Plumber on the street knew, we would have no problem with saying "you don't deserve the rights of a patent." but if a niche of people using a method is small, perhaps even only one person, is this a different situation?
maybe it's that the contribution that deserves reward is the actual contribution, and not a dissemination of the information.
“An unsuccessful experiment that is later abandoned does not negative novelty in a new
and successful device. Nevertheless, the existence and operation of a machine, abandoned after its completion and sufficient use to demonstrate its practicability, is evidence that the same ideas
incorporated in a later development along the same line do not amount to invention.”
“Public” Equals Nonsecret: "if the public wanted this knowledge, it could have gotten it without paying you"
free riding the problem for which rights and incentives that flow from them are the cure, and the free rider here would be Rosaire. he found the method and published it. that's not behavior for which we think an economic incentive is necessary. we think that the incentive is needed for the hard work of coming up with the process, which won't happen without the economic incnetive. we don't want the money to go elsewhere because then the money is just wasted. we are jealous of the public domain right!
does the practice of this method in the field, unknown to anyone but employed before the patent application, void Rosaire's patentability?
thinking back to trade secrets, we look at how many people other than the inventor know about the product or secret. if Rosaire was claiming a trade secret and only said that tempis knew about it, there would be no problem defending the trade secret. why is there a problem here? what is the effect of invalidating the patent?
patents are supposed to give something to society. so here, we have to draw the line between the private rights of patentees, and the public rights of society. we are very protective of the public domain's rights -- we want to be sure we're getting the benefit of the bargain, and we don't want to enrich someone who puts things into the public domain that we don't need. clearly, if Rosaire was taking a procedure that any Joe Plumber on the street knew, we would have no problem with saying "you don't deserve the rights of a patent." but if a niche of people using a method is small, perhaps even only one person, is this a different situation?
maybe it's that the contribution that deserves reward is the actual contribution, and not a dissemination of the information.
“An unsuccessful experiment that is later abandoned does not negative novelty in a new
and successful device. Nevertheless, the existence and operation of a machine, abandoned after its completion and sufficient use to demonstrate its practicability, is evidence that the same ideas
incorporated in a later development along the same line do not amount to invention.”
“Public” Equals Nonsecret: "if the public wanted this knowledge, it could have gotten it without paying you"
free riding the problem for which rights and incentives that flow from them are the cure, and the free rider here would be Rosaire. he found the method and published it. that's not behavior for which we think an economic incentive is necessary. we think that the incentive is needed for the hard work of coming up with the process, which won't happen without the economic incnetive. we don't want the money to go elsewhere because then the money is just wasted. we are jealous of the public domain right!
TEST:
1. Ready for patenting, no longer experimental
2. Commercial Offer for Sale
1. Ready for patenting, no longer experimental
2. Commercial Offer for Sale
Egbert v. Lippmann (1881):
Barnes' girlfriend was complaining about her corset steels. hearing this complaint, he created steels that could slide against each other and be more secure and comfortable. he gave these to his girl in 1855, and then in 1858. in 1863, Barnes took the steels and showed them to Sturgess and explained how they work and then barnes applied for a patent in 1866 (having slept on his rights for 11 years)... of course by the time he files, other people have figured out how to make the steels and there's a whole change to the corset making industry. barnes thinks he can take what the industry is doing and get paid off of it by patenting, since he was the first to come up with the idea. barnes dies and his widow sues Lickman (a corset manufacturer) for the deceased husband's patent.
the patent was applied for in march 1866 and the statutory mark at the time was 2 years prior to date of application: must as whether the invention was in public use in US more than 2 years prior to 1866.
what evidence is there to show that the corsets were sold before march 1864? none.
what other evidence shows that they were in public use before march 1864? barnes clearly hadn't tried to keep this secret.
if you share with one person, not for experienmentation, but when it's complete and the benefits can be shared with everyone, then you won't get the benefits of patenting because you've waited to long and we don't want to incentivize withholding the invention from the public.
the whole purpose of the patent system is to encourage new technology. victorian women would have been better off if they had had stays in 1850s instead of 1860s.
"The public use of an invention for more than two years before application, even without his consent and allowance, renders the letters-patent therefor void. To constitute the public use of an invention it is not necessary that more than one of the patented articles should be publicly used. The use of a great number may tend to strengthen the proof, but one well-defined case of such use is just as effectual to annul the patent as many. If an inventor sells a machine of which his invention forms a part, and allows it to be used without restriction of any kind, the use is a public one."
when you have the invention and try to hold onto an exclusivity longer than patent would allow, the statutory bars will not allow this. you will be barred forever.
Pfaff v. Wells Elecs (1998): The on-sale bar to patentability applies when two conditions are satisfied before the critical date. First, the product must be the subject of a commercial offer for sale. An inventor can both understand and control the timing of the first commercial marketing of his invention. There is no reason why unmanageable uncertainty should attend a rule that measures the application of the on-sale bar of 35 U.S.C.S. § 102(b) against the date when an invention that is ready for patenting is first marketed commercially. Second, the invention must be ready for patenting. That condition may be satisfied in at least two ways: by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.
“Printed Publication”
In re Klopfenstein (2004): “The statutory phrase “printed publication” under 35 U.S.C.S. § 102(b) has been interpreted to mean that before the critical date the reference must have been sufficiently accessible to the public interested in the art; dissemination and public accessibility are the keys to the legal determination whether a prior art reference was published…The expertise of the intended audience can help determine how easily those who viewed it could retain the displayed material. A reference, however ephemeral its existence, may be a "printed publication" under 35 U.S.C.S. § 102(b) if it goes direct to those whose interests make them likely to observe and remember whatever it may contain that is new and useful…Whether a party has a reasonable expectation that the information it displays to the public will not be copied aids a 35 U.S.C.S. § 102(b) inquiry.”
In re Hall p.192: **notice the dates!**
public accessibility is the touchstone in determining whether a reference constitutes a printed publication.
Nov. 1977 -- the printed graduate dissertation became available in a W. Germany university, but would not have been available in the US at this time
Feb 1979 -- the Hall patent application is filed in DC and Hall has never been exposed to the dissertation
does the dissertation bar the patent under 102(a)? NO.
does the dissertation bar the patent under 102(b)? YES. this is not Rosaire, this is two independent people coming up with the same idea. and the uncatalogued dissertation is going to bar the patent of an inventor in the US.
why do we do this?
because we're jealous of the public domain. even under strong moral and ethical arguments that are favorable aren't as strong as the reasoning that the incentive wasn't necessary if it is already in the public domain. there is something about the quality of the invention that lends itself to obviousness if a grad student across the world came up with this two years before you. there's no need to incentivize.
the clock is ticking: if you want exclusive rights, you better come forward and give us what we want for those rights. but 102(a) works differently -- has anyone known about and used?
in 102(b) we want to know if anyone has used or described the invention anywhere in the worldFactors – 1) Good faith effort to reduce to practice invention; 2) Invention cannot feasibly be tested in private; 3) due diligence; 4) under control of the inventor
City of Elizabeth v. Pavement Co. (1877) – Invention was publicly used for six years; the use of an invention by the inventor himself, or by another person under his direction, by way of experiment, and in order to bring the invention under his direction, is experimental use.
Campbell v. Spectrum Automation Co. (1975): Plaintiff brought action against defendant for infringement. Defendant counterclaimed, contending that the patent was invalid and therefore could not be infringed, as plaintiff was not the true inventor. Based on review of the record, the court found evidence sufficiently strong to satisfy the clear and convincing standard, and it held that the district court was correct in finding that defendant had carried that heavy burden.
when looking at 102(a) and (b), keep the dates in mind!!
Retention of control over the use is key.
§102(c )Abandonment
- we won't look to closely at this in Intro IP
- Express Abandonment: Express statement, openly disclaiming any intent to obtain a patent.
- Implied Abandonment: Abandonment through conduct by the inventor that indicates intent to forego a patent.
The Enablement Standard for Anticipation
A prior art reference cannot anticipate an invention unless the reference is enabling.
In re Hafner (1969): “A disclosure lacking a teaching of how to use a fully disclosed compound for a specific, substantial utility or of how to use for such purpose a compound produced by a fully disclosed process is, under the present state of the law, entirely adequate to anticipate a claim to either the product or the process and, at the same time, entirely inadequate to support the allowance of such a claim…§ 112 provides that the specification must enable one skilled in the art to "use" the invention whereas § 102 makes no such requirement as to an anticipatory disclosure.”
· The disclosure of how to use must relate to a use of the kind considered by the Supreme Court in Brenner v. Manson to be a sufficient utility.
· A reference that constitutes prior art merely need to be enabled with “adequate directions for the practice of the patent” in order to anticipate. In other words, an anticipatory reference must contain sufficient information to allow a person to “practice the invention.” (Seymour v. Osborne)
Titanium Metals Corp. v. Banner (1985): “Enablement in this case involves only being able to make the alloy, given the ingredients and their proportions without more. The evidence here, however, clearly answers that question in two ways. Appellee's own patent application does not undertake to tell anyone how to make the alloy it describes and seeks to patent. It assumes that those skilled in the art would know how. Secondly, appellee's expert, Dr. Williams, testified on cross examination that given the alloy information in the Russian article, he would know how to prepare the alloys "by at least three techniques." Enablement is not a problem in this case.”
· Where the anticipatory reference is a public use, rather than a publication, some case law suggests that the enablement standard does not apply. Such uses may be non-informing products as in Lockwood v. American Airlines (1997).
Rule 131: Establishing a Date of invention
The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from prior to said date to a subsequent reduction to practice or to the filing of the application. Original exhibits of drawings or records, or photocopies thereof, must accompany and form part of the affidavit or declaration or their absence must be satisfactorily explained
Non-obviousness, 35 USC s. 103
you cannot get a patent, even if it's not exactly already referenced
as prior art reference (something already out in the world that teaches
you how to do in a certain field) that tells us exactly what your
invention is, if the the difference between your invention and prior
art is so minor that your invention would have been obvious at the
time made to any PHOSITA then you can't get a patent.
based on everything you need to know as an invention species,
was the invention for which you seek a patent obvious?
well... what does obvious mean?
Non-obviousness, 35 USC s. 103
you cannot get a patent, even if it's not exactly already referenced
as prior art reference (something already out in the world that teaches
you how to do in a certain field) that tells us exactly what your
invention is, if the the difference between your invention and prior
art is so minor that your invention would have been obvious at the
time made to any PHOSITA then you can't get a patent.
based on everything you need to know as an invention species,
was the invention for which you seek a patent obvious?
well... what does obvious mean?
§103. Conditions for patentability; non-obvious subject matter
(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of this title,
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.
Patentability shall not be negatived by the manner in which the
invention was made.
identically disclosed or described as set forth in section 102 of this title,
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.
Patentability shall not be negatived by the manner in which the
invention was made.
- Must be analogous prior art – either 1) from the same field of endeavor or 2) reasonably related to the particular problem.
Graham v. John Deere Co. (1966) – graham had obtained the patent to a spring handle for plow machines which differed slightly from a prior patent that graham had obtained. the old patent and then the shent attaches to the spring assembly and sits on top of a cage thing. but with the new patent the shaft sits underneath -- very clever.
the question asked is whether the 789 patent is patentable as to reference to prior art? there's no prior art reference that discloses a clamp for the shank in precisely the manner that graham created. in that sense, it's not anticipatory. but we still have to ask, does this really deserve a patent?
the court gives a history of the obviousness doctrine (see p.215), going back to hotchkiss and the patent commissioners, establishing the idea of one with background skill in the calling, our PHOSITA
The determination of non-obviousness
is made after establishing the scope and content of prior art, the
differences between the prior art and the claims at issue, and the level
of ordinary skill in the pertinent art. The Court concluded that the patents
do not meet the test of the "nonobvious" nature of the "subject matter
sought to be patented" to a person having ordinary skill in the pertinent
art and were therefore invalid.
why would we do this? the clamp design is something that nobody has explicitly told us how to do before. but why don't we give the patent? because, as in Hall, if we wanted the information we could have easily found it -- a) by having ordinary skill in farm manufacturing and b) it's not worth the cost to us to incentivize this for you to show us!
35 USC 102 is saying that we already have exactly this information because someone else already figured it out!
35 USC 103 is saying that we don't need you to show us exactly how to do this, a PHOSITA can figure this out....
so where do we draw the line as to what is "obvious"?
the question asked is whether the 789 patent is patentable as to reference to prior art? there's no prior art reference that discloses a clamp for the shank in precisely the manner that graham created. in that sense, it's not anticipatory. but we still have to ask, does this really deserve a patent?
the court gives a history of the obviousness doctrine (see p.215), going back to hotchkiss and the patent commissioners, establishing the idea of one with background skill in the calling, our PHOSITA
The determination of non-obviousness
is made after establishing the scope and content of prior art, the
differences between the prior art and the claims at issue, and the level
of ordinary skill in the pertinent art. The Court concluded that the patents
do not meet the test of the "nonobvious" nature of the "subject matter
sought to be patented" to a person having ordinary skill in the pertinent
art and were therefore invalid.
why would we do this? the clamp design is something that nobody has explicitly told us how to do before. but why don't we give the patent? because, as in Hall, if we wanted the information we could have easily found it -- a) by having ordinary skill in farm manufacturing and b) it's not worth the cost to us to incentivize this for you to show us!
35 USC 102 is saying that we already have exactly this information because someone else already figured it out!
35 USC 103 is saying that we don't need you to show us exactly how to do this, a PHOSITA can figure this out....
so where do we draw the line as to what is "obvious"?
Secondary Considerations: objective evidence required in
analysis of non-obviousness
analysis of non-obviousness
- Long-felt but unsolved need
- Commercial Success
- Failed Efforts of Others
- Copying by Others
- Praise for the Invention
- Unexpected Results
- Disbelief by Experts
Suggestion or Motivation to Combine: Either via the nature of
the problem to be solved, the teachings of the prior art, or the knowledge
of persons of ordinary skill in the art.
the problem to be solved, the teachings of the prior art, or the knowledge
of persons of ordinary skill in the art.
Ruiz v. Chance (2000): It is insufficient to establish obviousness that
the separate elements of the invention existed in the prior art, absent
some teaching or suggestion, in the prior art, to combine the elements.
The reason, suggestion, or motivation to combine may be found
explicitly or implicitly: (1) in the prior art references themselves;
(2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or (3) from the nature of the problem to be solved, leading inventors to look to references relating to possible solutions to that problem. While the references need not expressly teach that the disclosure contained therein should be combined with another, the showing of combinability must be clear and particular. Factors that may be considered in determining the ordinary level of skill in the art include: (1) the types of problems encountered in the art; (2) the prior art solutions to those problems; (3) the rapidity with which innovations are made; (4) the sophistication of the technology; and (5) the educational level of active workers in the field.
the separate elements of the invention existed in the prior art, absent
some teaching or suggestion, in the prior art, to combine the elements.
The reason, suggestion, or motivation to combine may be found
explicitly or implicitly: (1) in the prior art references themselves;
(2) in the knowledge of those of ordinary skill in the art that certain references, or disclosures in those references, are of special interest or importance in the field; or (3) from the nature of the problem to be solved, leading inventors to look to references relating to possible solutions to that problem. While the references need not expressly teach that the disclosure contained therein should be combined with another, the showing of combinability must be clear and particular. Factors that may be considered in determining the ordinary level of skill in the art include: (1) the types of problems encountered in the art; (2) the prior art solutions to those problems; (3) the rapidity with which innovations are made; (4) the sophistication of the technology; and (5) the educational level of active workers in the field.
Nonanalogous Art
In re Clay (1992): Although 35 U.S.C.S. § 103 does not, by its terms, define the art to which the subject matter sought to be patented pertains, this determination is frequently couched in terms of whether the art is analogous or not, whether the art is too remote to be treated as prior art. Two criteria determine whether prior art is analogous: (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.
Inherency
In re Robertson (1999): “Anticipation under 35 U.S.C.S. § 102(e) requires that each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference…If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference and that it would be so recognized by persons of ordinary skill. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”
“That which would literally infringe if later in time anticipates if earlier than the date of invention.” Lewmar Marine v. Barient (1987).
Schering Corp. v. Geneva Pharms., Inc (2003): In the context of determining the validity of a patent, inherent anticipation does not require that a person of ordinary skill in the art at the time would have recognized the inherent disclosure. Where the result is a necessary consequence of what was deliberately intended, it is of no import that the article's authors did not appreciate the results. Inherency, like anticipation itself, requires a determination of the meaning of the prior art. Thus, a court may consult artisans of ordinary skill to ascertain their understanding about subject matter disclosed by the prior art, including features inherent in the prior art. A court may resolve factual questions about the subject matter in the prior art by examining the reference through the eyes of a person of ordinary skill in the art, among other sources of evidence about the meaning of the prior art.
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