Dealing with In re Keller and In re Merck November 11, 2010
Posted by Brian Schar in General.3 comments
Having had occasion to deal with a cut-and-paste 103 rejection under In re Keller and In re Merck, I thought that I would myself cut and paste here a short response that I have developed for addressing those cases, in the hope that it may be useful to others.
“The MPEP states that a rejection under 35 U.S.C. §103 requires “[a] finding that the prior art included each element claimed…with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference.” (MPEP 2143(A)). That is, where a limitation X is present in a claim, and multiple references A, B and C are combined to form the set A+B+C, the claim limitation X must be present in at least one of the individual references for it to be present in the set of combined references. That is, a limitation that is not present in any one of the references A, B or C cannot be present in the combination A+B+C. Pointing out that such a limitation is not present in all of the cited references is not “attacking references individually.”
The cited cases stand for other propositions. In re Merck simply states that a reference cannot be “read…in isolation.” In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986). In re Keller holds that an affidavit concerning only one prior art reference is not sufficient to overcome obviousness rejection as to three separate references. In re Keller, 642 F.2d 413, 422-23, 427 (CCPA 1981). Neither of these holdings is relevant to establishing that none of the cited references include a claim limitation. Indeed, the logic of the Examiner’s Answer is so overbroad that it would prevent any argument against a prima facie finding of obviousness by the Patent Office, improperly converting the prima facie finding to a de jure conclusion.”
I also commend the reader to the Patent Prospector’s excellent blog post that provides a much deeper analysis of the erroneous application of In re Keller by the USPTO.
Patent Prosecution 101 – The “Invention” November 4, 2010
Posted by Brian Schar in Patent prosecution.2 comments
This post is the first in what I plan to be an occasional series, oriented toward the new practitioner. I hope to set forth my view on several basic fundamentals of patent prosecution in a way that may be helpful.
The first fundamental of patent prosecution is the “invention.” After all, patents are all about invention, right? An inventor invents an invention, then contacts his or her patent attorney to obtain a patent on that invention.
In its awkward and inimitable way, the MPEP states that “the applicant shall particularly point out and distinctly claim the subject matter which he or she regards as his or her invention. The portion of the application in which he or she does this forms the claim or claims. This is an important part of the application, as it is the definition of that for which protection is granted.” (MPEP 608.01(k)). As the CFR puts it, more concisely, “[t]he specification must conclude with a claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention or discovery.” (37 CFR 1.75(a)). Even more clearly, the Federal Circuit boils this down to the aphorism that “‘[t]he invention’ is defined by the claims.” (E.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991)).
Because “the invention” is defined by the claims, there is no need to state elsewhere in the application that “the invention” is anything else. Indeed, careless use of the term “invention” in the specification can be fatal in an infringement case arising out of that patent. This only makes sense; if the invention is defined by the claims, but the specification also throws around the term “invention” with respect to other elements that may not be in the claims, or that may be more limited than the claims, confusion is generated about what the inventor really regards as the subject matter of the invention.
One might be tempted to say, as a matter of logic, that if the invention is “defined by” the claims, then any other use of the term “invention” in the specification is irrelevant as to the scope of the invention because it is contrary to the definition set forth by the claims. However, precedent does not agree. See, for example, C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004), and Scimed Life Systems Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337 (Fed. Cir. 2001).
The practical upshot is that one should not use the word “invention” in a US specification. Of course, there’s always a “but.” If you intend to file in certain foreign jurisdictions (mainly Japan), you may be forced into reciting objects of the invention. Consult an experienced practitioner if foreign filing is planned.
