UNITED STATES PATENT AND TRADEMARK OFFICE 35 USC §§ 102 and 103: Special Topics USPTO Training Academy Curriculum Committee

Refresher- 35 USC 102 and 103 Special Topics Objectives You will review: Inherency and Prior Art 35 USC §102/103 Rejections Official Notice 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Prior Art What is inherency? Inherency, with respect to applying prior art, refers to a determination of whether a characteristic, property or feature recited in a claim that is not explicitly taught by the prior art, would have necessarily been present in the teachings of the prior art. See: MPEP §2112 See MPEP 2112 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Prior Art Why is inherency important? As an Examiner, you will often find a reference that is close to being applicable under 35 USC §102, but is silent on one or more claim limitations. In some cases, the limitations that have not specifically been discussed by the prior art; may be inherently present. In these cases, you may reject the claim under 35 USC §102, with an explanation of why the limitations of the claim that are not explicitly taught by the prior art must have inherently been present in the prior art. Save time, less searching. Note: Inherency should not be used to avoid making an obviousness rejection. This could lead to unnecessary 2nd action non-final rejections. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics Inherency - Example Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The claims were directed to a titanium alloy containing 0.2-0.4% Mo and 0.6-0.9% Ni having corrosion resistance. The prior art, a Russian article, disclosed a titanium alloy containing 0.25% Mo and 0.75% Ni but was silent as to corrosion resistance. See MPEP 2112.01, Section I - PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency – Example (cont.) The Federal Circuit held that the claim was anticipated because the percentages of Mo and Ni were squarely within the claimed ranges. The court went on to say that it was immaterial what properties the alloys had or who discovered the properties because the composition is the same and thus must necessarily exhibit the properties. See MPEP 2112.01, Section I - PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Evidence The Examiner must provide a rationale or evidence that the claim limitation not expressly disclosed by the reference is nonetheless necessarily present in the reference. Inherency may not be established by probabilities or possibilities. The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish inherency of that result or characteristic. MPEP 2112, section IV "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.' " In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir. 1999). We don’t have to have absolute, 100% proof that a feature is 100% required by the reference, just a rationale or evidence that the feature is 100% required in order to make the rejection. In other words, we make a prima facie case of inherency and applicant can provide rationale or evidence to rebut. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Evidence (cont.) Findings of fact and/or technical reasoning can support the determination that an allegedly inherent characteristic necessarily flows from the teachings of the prior art. Once the examiner presents evidence or reasoning tending to support the determination of inherency, then the burden shifts to applicant to rebut such evidence. MPEP 2112, Sections IV and V 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Time of Invention There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. MPEP 2112 Section II Thus, e.g. the recognition of the inherent property or feature in a prior art product by those of ordinary skill can be after the filing date of your application. “Simply put, the fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.” Toro Co. v. Deere & Co., 69 USPQ2d 1584 1590 (Fed. Cir. 2004). 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and New Properties A claim to something which is old does not become patentable upon the discovery of a new property. E.g., the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. MPEP 2112 Section I In other words the claimed product does not become structurally distinct from the prior art merely based on additional knowledge about that product. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Product Claims When the structure taught by the reference is identical or substantially identical to that of the claims, the claimed properties or functions are presumed to be inherent. Similarly, for product-by-process claims, when structure taught by the reference is produced by identical or substantially identical processes, the claimed properties or functions are presumed to be inherent. MPEP 2112.01 Sections I and II Composition, Product and Apparatus claims. Product by process claims with new properties or functions recited are met by prior art teaching the product made by the same or substantially the same way. Regarding “substantially the same” processes, this could include processes that differed with respect to steps that did not impact functionality, e.g. merely impacted aesthetic design. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Product Claims (cont.) For composition of matter claims, if the composition is physically the same, it must have the same properties. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. MPEP 2112.01 Section II See In re Spada, 15 USPQ2d 1655, 1658 (Fed Cir 1990). 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Method Claims Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. MPEP 2112.02 Re. same device, be careful when applying “same device” to computer-related inventions. A general purpose computer is not “the same device” as a general purpose computer programmed with specific function X. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Inherency and Method Claims (cont.) The discovery of a new use for an old composition or structure based on previously unknown properties of the structure might be patentable as a process of using. However, when a claim recites using an old composition or structure and the “use” is distinguished merely by a newly-recognized result or outcome of the use, rather than specific claimed steps, then the claim is anticipated. MPEP 2112.02 Not patentable as a product claim since composition or structure is OLD. “Might be patentable” as it depends on the actual method steps recited. Anticipated because the newly recognized or discovered benefit of the use did not change the manipulative steps of the method. Same steps with same structure or composition. See In re. May 197 USPQ 601,607 (CCPA 1978) where appellants claimed using an old analgesic (“pain killer”) with the potency of morphine for non-addictive pain relief based on the discovery that the analgesic was non-addictive. The discovery of the previously unknown property (non-addictiveness) did not provide for a new use of an old analgesic. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics 102/103 Rejections What is a “102/103” Rejection? For a particular claim, a single rejection under either 35 USC §102 or 35 USC §103 should be made; however, certain circumstances will warrant related rejections using 102 and 103 in combination. We typically make just the single strongest rejection, not cumulative rejections, but a 102/103 is not cumulative. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics 102/103 Rejections (cont.) Why are 102/103 rejections important? 102/103 rejections provide for compact prosecution in instances where, e.g., there may be a dispute on the determination of inherency or matters of claim interpretation. Note the following scenarios A) through F) for using 102/103 rejections. See form paragraph 07-27 and corresponding examiner notes. In other words, given one reasonable claim interpretation for a particular claim, the prior art applies as a 102, given another reasonable claim interpretation the same prior art applies in a 103 rejection for that claim. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

A) Claim Interpretation When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 USC §102 is appropriate and given another interpretation, a rejection under 35 USC §103(a) is appropriate. However, if the multiple interpretations of the claim(s) renders the claim(s) indefinite, a rejection under 35 USC §112, second paragraph, may be appropriate. See MPEP 2111-2116.01 for guidance on claim interpretation. Actually in dispute based on prosecution history, or the examiner anticipates a dispute. Re. 112,2nd see Sept 2 ’08 policy memo on 112,2nd and Halliburton v. M-I, 85 USPQ2d 1663 Generally, a 102/103 must explain what the Examiner is thinking about the different interpretations and include how the prior art is seen to teach every element as well as a full Graham v Deer analysis for the 103 based on these interpretations. In some fact situations, however, the 103 can be explained by stating that the instant claims and the prior art are so close that any modification would have been so minor or the products/processes are so close that any differences would have been immediately known in the art. See your SPE/Trainer. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics B) Inherency When a reference discloses all the limitations of a claim except a characteristic, property or function, AND the examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention, the examiner may shift the burden to show lack of inherency to applicant. You may have enough evidence/technical reasoning to show inherency and shift the burden of proof to applicant. You can anticipate applicant’s rebuttal by backing up the 102 with a 103. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also In re Fitzgerald, 205 USPQ 594 (CCPA 1980) and MPEP 2112-2112.02 as well as In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977) 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics C) Genus/Species When the reference teaches a small genus which places a claimed species in the possession of the public and the species would have been obvious even if the genus were not sufficiently small, the examiner may be able to justify a rejection under 35 USC §102. See In re Schaumann, 197 USPQ 5 (CCPA 1978) See MPEP 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

D) Product-by-Process When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process, the examiner may be able to justify a rejection under 35 USC §102. “”[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Also see In re Marosi, 218 USPQ 289 (Fed Cir 1983) and In re Thorpe, 227 USPQ 964 (Fed Cir 1985) and In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). See also MPEP 2113 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

E) Means-Plus-Function When the reference teaches all claim limitations except a means-plus-function limitation and the Examiner is not certain whether the element disclosed in the reference is an equivalent to the claimed element and, therefore, anticipatory, or whether the prior art element is an obvious variant of the claimed element, the examiner may be able to justify a rejection under 35 USC §102. See MPEP 2183-2184 See also 112,6th policy memo of Sept 2 ’08 re. means plus function and equivalents. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics F) Ranges When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range, the examiner may be able to justify a rejection under 35 USC §102 because the if the claimed range and the prior art range overlap, the reference necessarily contains a species in the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993) and Titanium Metals v. Banner 227 USPQ 773. See MPEP 2112.01 and 2131.03 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics 102/103 – Example The claim is: 1. A device comprising: means for capturing medical images; and means for archiving the captured images. The specification teaches that the corresponding structure under 35 USC §112, sixth paragraph, for the “means for capturing medical images” is an ultrasound device for use with heart patients. The prior art teaches all of the claimed features except that in the reference the capturing of images is done by MRI scans. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics 102/103 – Example (cont.) In this instance, a prima facie case of equivalence can be made, but it is uncertain whether the prior arts MRI ultimately qualifies as an equivalent under 112, sixth, for the means for capturing medical images. The spec mentioned use on “heart patients” and ultrasound is preferred over MRI as it is not affected by pacemakers like MRI, yet not all such patients have pacemakers. Thus, arguments for and against equivalence can be made, e.g., with respect to interchangeability. As a result, a 102/103 rejection should be made. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics Official Notice What is Official Notice? Official Notice is a tool that enables an Examiner to rely on common knowledge or incorporate facts not otherwise in the record, without documentary evidence. See: MPEP §2144.03 Should be used rarely without documentary evidence. See MPEP 2144.03 Official Notice differs from inherency in that you are adding a fact to the record that is not necessarily there in the prior art, but is well known. Official Notice is not to be used as a replacement for searching. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Official Notice (cont.) Why is Official Notice important? In appropriate circumstances, Official Notice can provide facts to, e.g., support motivation in obviousness rejections, or to “fill in the gaps” which might exist in the prior art references. Saves searching for little details that are old and well know. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Appropriate Official Notice When? Official Notice should only be taken by the Examiner where the facts asserted to be well-known, or to be common knowledge in the art, are capable of instant and unquestionable demonstration as being well-known so as to defy dispute. Taking official notice should be rare when an application is under final rejection. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Appropriate Official Notice (cont.) Assertions of technical facts in the areas of esoteric technology or specific knowledge of the prior art must always be supported by citation to some reference work recognized as standard in the pertinent art. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Appropriate Official Notice (cont.) If Official Notice is taken, the basis for such reasoning must be set forth explicitly. The Examiner must provide specific factual findings predicated on sound technical and scientific reasoning to support his or her conclusion of common knowledge. It is never appropriate to rely solely on Official Notice as the principal evidence upon which a rejection is based. One way to provide support is to give a real world example. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Official Notice – Example The claim is: 1. A computer apparatus comprising: a computer mouse pointer for selecting product options; and a processor programmed to calculate a total price for the product based on said selected options. The prior art teaches: A computerized kiosk that calculates the total price for customizable products in response to customization selections entered by a customer via a touchscreen. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Official Notice – Example (cont.) The prior art reference teaches all the claimed limitations except that the device used to input the product options is a mouse. Official Notice can be taken that a mouse is a well-known device used to input selections. This fact is capable of instant and unquestionable demonstration, and no documentary evidence is necessary. Official Notice is thus taking the place of a secondary reference. This fact alone, however, is not enough to make a prima facie case of obviousness. A proper motivation or rationale to combine must still be provided. Note that the Official Notice is not inherent in the reference, even if the reference were silent on the input device. The proper use of O.N. can be tricky, please consult your SPE/Trainer. Common errors on Official Notice: O.N. is taken on something that is not capable of instant and unquestionable demonstration, it’s improperly used just to cover limitations not found by the examiner. When O.N. is limited to facts capable of instant and unquestionable demonstration, the O.N. when added to the primary reference still does not cover all the claim limitations, yet the claim is still rejected on this basis. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Challenges to Official Notice Applicant can challenge a taking of Official Notice, but applicant must specifically point out the supposed errors in the Examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well known in the art. If the traverse was inadequate, the examiner should include an explanation as to why it was inadequate. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Challenges to Official Notice (cont.) If applicant adequately traverses the Examiner’s assertion of official notice, the Examiner must provide documentary evidence in the next Office action if the rejection is to be maintained. However, a general allegation that the claims define a patentable invention without any reference to the examiner’s assertion of official notice would be inadequate. It would also be inadequate for the applicant to merely allege that the claims define a patentable invention, or to merely demand that the examiner provide proof of the officially noticed fact. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Challenges to Personal Knowledge Assertions When the personal knowledge of the Examiner is referenced under 37 CFR 1.104(d)(2), the Examiner must support the reference with an affidavit “when called for by the applicant.” Relying on personal knowledge under 37 CFR 1.104(d)(2) is different from taking Official notice. Personal knowledge means that the examiner him/herself knows something to be the case.  Official notice means anyone in the field would know it.  Per rule 1.104(d)(2), if an examiner relies on personal knowledge, and an applicant requests an affidavit, the examiner must either supply the affidavit or drop the rejection. When making the affidavit the examiner should not merely make a general statement, e.g. it is my personal knowledge that X was known. Rather the examiner should give as many facts as possible, e.g. it is my personal knowledge that on this specific date at this specific location X was being sold by this specific company. On the other hand, if the examiner relies on Official notice, the examiner is not bound to supply a reference supporting the noticed fact unless applicant makes a complete traverse per rule 1.111(b), including reasons why the noticed fact is not believed to be correct.   03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics Admitted Prior Art If applicant does not traverse the Examiner’s assertion of Official Notice or applicant’s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice or that the traverse was inadequate and states the reasons why the traversal is not adequate. MPEP 2144.03 Section C Very useful, but be sure to specifically invoke Official Notice so that applicant is aware of this procedure. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics Final Rejections If the Examiner adds a reference in the next Office action after applicant’s rebuttal, and the newly-added reference is added only to directly corresponding evidence to support the prior common knowledge finding, and it does not result in a new issue or constitute a new ground of rejection, the Office action may be made final. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Final Rejections (cont.) If no amendments are made to the claims, the Examiner must not rely on any other teachings in the newly-added reference if the rejection is made final. If the newly-added reference is added for additional or other reasons than to support the prior common knowledge statement and a new ground of rejection is introduced by the examiner that is not necessitated by applicant’s amendment of the claims, the rejection may not be made final. 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics Summary You should now have a better understanding of: Inherency and Prior Art 102/103 Rejections Official Notice 03-25-11 Refresher- 35 USC 102 and 103 Special Topics

Refresher- 35 USC 102 and 103 Special Topics Questions? Thank you! 03-25-11 Refresher- 35 USC 102 and 103 Special Topics