Intellectual Property Boston College Law School March 5, 2008 Patent – Nonobviousness 2

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

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

Infringement 35 U.S.C. § 271 –“(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

Patent No. 5,205,473

“What is claimed is: –1. A recyclable, insulating beverage container holder, comprising: a corrugated tubular member comprising –cellulosic material and at least a first opening therein for receiving and retaining a beverage container, said corrugated tubular member comprising fluting means for containing insulating air; said fluting means comprising fluting adhesively attached to a liner with a recylable adhesive

Phillips v. AWH We claim: –1. Building modules … comprising in combination, an outer shell …, sealant means … and further means disposed inside the shell for increasing its load bearing capacity comprising internal steel baffles extending inwardly from the steel wall shells

Sources of Interpretation Claim language Patent specification Prosecution history Extrinsic evidence –Expert testimony –Dictionaries –Treatises

Canons of Construction Relationship of claims to specification –Can refer to specification for express definition –Can refer to specification where ambiguity Claim differentiation –Interpret so as to avoid redundant claims Presumptions about breadth –Interpret to preserve validity –Where two equally valid, adopt narrower one

Administrative Next Assignment –Into IV.C.3 – Doctrine of Equivalents Through Festo