An Introduction to Patent Law
by Janice M. Mueller
Book Review: In this 400 page paperback, Professor Janice Mueller (Pittsburgh) lays out the basics of patent law and explains the requirements for obtaining a patent as well as considerations during litigation. This is essentially a textbook, and covers the same material as other patent law textbooks. The main difference is that Mueller’s writing flows and is easy to read. In addition, she explains the foundations of patent law without getting bogged-down in unnecessary case-law and statutory interpretation.
This is a basic but thorough text covering the legal side of patents.
Who should read An Introduction to Patent Law:
- Law students (This is a good back-up to understand what your casebook is saying).
- Anyone entering the area of intellectual property and patent law.
Caveat:
This book is of limited use as a research end-point for an experienced patent attorney. The book is an introduction and does not cover the topics in enough depth to be serve as a treatise. (That’s why it is called an introduction).
About Book Review Monday: On occasional Monday we review patent law related books. Let me know if you are interested in writing a book review. (Send your proposal to crouch@mbhb.com).
I’m sorry. But I’m with the examiner on this one. Learned in law school that “and/or” has multiple interpretations and that it is a sloppy drafter who resorts to it . . . or one who intentionally wants to be ambiguous. Mr. Gross wouldn’t have had to do the appeal if more precisely drafted in the first place. It was very kind of the PTAB to have taken it upon themselves to clear up the ambiguity for him.(Disclosure: I am not the examiner and/or not related to the examiner and/or anyone on the Board.
Multiple interpretations…?That would depend on what the definition of “is” is…(said in the best William Jefferson Clinton tones)
Nice report…sounds good..
There is ANOTHER problem with the “and/or.” It calls for forming a website collective, based on “either” a “common topic” or a “common contract” or both. However, only the “common topic” aspect is employed by the other steps. “Common contract” is unrelated to any other step in any way. It just hangs there — an apparently completely unrelated criteria for forming a collective. When items are added to a claim that have no functional relationship to the other elements of a claim, isn’t there a 112, p.2 problem? In former times, such claims were known as aggregations, a parts list, like my example of a claim to the combination of a monkey and a monkey wrench. What is the proper rejection of such a claim where unrelated items are simply listed that add nothing to the claim?
Of all people, Gene Quinn note the problem of combining in a claim two different things that have no relationship to each other. He says that the claim should have received a 112, p.2 rejection.I noted that AAA JJ responded to Gene and noted the problem was “aggregation.” It is a 112, p.2 problem.
“Of all people”….?That’s just a little bit of Malcolm-taint there, is it not?Speaking of Malcolm taint, the concept of ‘aggregation’ would help explain why his pet theory of [oldstep]+[newthought] is such a fallacy, and why he always runs away and/or dissembles when it comes to claims as a whole and integration, why he is always trying to introduce the strawman of claims completely in the mind (when the topic is claim elements in the mind and never a complete claim). Aggregation is the concept that explains why claims of [oldstep]+[oldstep] or [oldstep+[ANYTHING] may well be perfectly patent eligible AND patentable claims, as the concept distinguishes between collections that merely are unconnected and lumped together and collections that are integrated. His fallacy relies on the “+” always being an aggregation when clearly that is simply not so.
Perhaps something like the following would minimize the risk of unnecessary narrowing:“… at least one of A, B, or C, individually or combinations orsub-combinations thereof.â€
I think you get all that if you just say “at least one from the following group.” Saying it is a group then gives one the group selection process. I think this way is actually the cleanest.
This is some trollriffic stuff alright. Check out the pending claims and try to believe it. Exhibit A for our broken messed up patent system. Will the USPTO ever wake up?A method of identifying appropriate electronic advertisinginformation for a search engine implemented using computer software instructions embodied in a computer usable medium executing on one or more computing machines and comprisingOkay, so note that it’s not just “ad information” but “appropriate” ad information”. The term “appropriate” is not defined. Presumably it means “ad information that works.” Isn’t that nice? It’s a method for doing something that works! And it uses a computer in some manner, although at this point we have no idea why the computer is mentioned at all. But it is like a beautiful dream come true already. Let’s see what awesome technology awaits below … forming a website collective whose members include a plurality of different websites characterized by a common parameter including at least one of a common content topic and/or a common contractual arrangement;Okay so two members are formed into a collective based on some “common content” or simply because they agree to be formed thusly. Nothing new at all about that. Entities have joined together for millions of different business and advertising purposes since the beginning of commerce. “Websites” are just another old example of such, no different than any old storefront or newspaper stand in that context.further wherein said website collective members are treatedas a single aggregate content entity by the search engine for responding to searches releated to at least said common content topic;I guess that’s the only where the computer necessarily comes in. Of course, search engines, like supermarket aisles, are just old entry ports into a venue where different information is presented to potential consumers. So far this is just obvious crap without much of a point … but I’m sure it gets really technological really fast. compling content taken from webpgages in the websitecollective to generate a synthetic document representing aggregrated content from said different websites for said single aggregate content entity;It’s not clear who or what performs this step. But the term “synthetic document” is pretty funny. What other kind is there? I’ll go way out on a limb and bet that it’s not defined in the application. In any event, this “synthetic document” (LOL) “represents” “aggregated content” for that collective. In other words, apparently, somebody or something collects information content displayed by the entities in the collective and “aggregates it”. Golly, so far this all seems pretty silly and very obvious (and very very broadly claimed)…. Maybe the real magic is the part coming up where the “appropriate” ad is “identifed.” That must be it! Let’s see… identifying an advertisement to be associated with saidaggregated content and said single aggregate content entity by comparing content of said advertisement and said synthetic document.Well, that’s disappointing. Apparently someone looks at the list of “aggregated content” and “compares it” to some advertisement (the source of which is left to the imagination, I guess) and based on some unnamed criteria (?!?) the advertisement is “identified” or it isn’t. What happened to “appropriate”?This is one sorry, sad claim. And there’s nothing much more in the specification to add to it. It’s just description of a dream about some imaginary software that the applicant couldn’t be bothered to write and share with the PTO, apparently. But rest assured if someone else goes through the immense trouble and time of figuring out how to make an “appropriate ad identifier” work, there will be some fireworks. That’s true even in the very likely case that nobody except me and ten other people ever read this application (and really, why would anyone bother? it’ll be just another piece of computer-implemented “shove an ad in your face” dreams buried among a million other poorly articulated hand-wavey computer-implemented dreams that the USPTO will have published over the past several years (and millions more to come, very shortly, if present trends continue).
Other than the “website” limitations, the claim would read on a convention of related businessmen (“common topic”) where many of them also had booths to display their wares, and where the convention provided a brochure describing the content to be displayed at the booths, an where the brochure had ads. I have attended many such conventions.Now, if there is invention here, it would be in the way the search engine operates. But I am not sure that what is being claimed given the obtuse claim language and claim structure.
From the Summary:Another aspect of the invention relates to a system and method for identifying appropriate electronic advertising information for a search engine comprising: forming a website collective whose members include a plurality of different websites characterized by a common parameter including at least one of a common content topic and/or a common contractual arrangement; compiling content taken from webpages in the website collective to generate a synthetic document representing aggregated content from said different websites, and identifying an advertisement to be associated with said aggregated content by comparing content of said advertisement and said synthetic document.Wow. It’s a “system” where two information providers get together, come up with a list of information they provide, and identify an ad based on that list. Man, it’s amazing how advanced civilization has come in the last few years. This kind of technology makes Star Trek look like the Flintstones. I wonder if there will be ads in my robot car? LOL. The best part is that Google will be able to tell us instantly what ad was on the screen when the car ran over that little girl.
1. A method of presenting advertising material with a computing system comprising:processing a query from a user related to a first topic within a search engine page to present a set of search results;presenting at least one first advertisement with the computing system related to said first topic within said search engine page with said set of search results;measuring an interaction by said user with said first advertisement to determine a performance score for said first advertisement while presenting said set of search results with the computing system, including by identifying if said user selects said first advertisement;presenting said first advertisement on one or more candidate individual webpages separate from said search engine page with the computing system to users based on a value of said performance score.Wow, that’s some amazingly pure junk. Just imagine — you shove an ad in a person’s face because you have some evidence that the person might respond to the ad. Then (get ready for this folks!) depending on the level of response to the ad, you present the ad elsewhere! Nick probably was born in 2003 or something so he never had time to learn about the history of advertising, which goes all the way back to 1996. All Nick knew (and let’s face it, all he ever needs to know) is that if you attach some junk to a POWERFUL COMPUTER BRAIN you’ll be taken super serious by the equally naive examining corp of the USPTO.
I see a problem in the claim created by the “and/or.” What does the following mean if there is no common topic in a collective:”further wherein said website collective members are treated as a single aggregate content entity by the search enginefor responding to searches related to at least said common content topic;”
I suppose the specification described A, B and the combination A and B. But, what if it did not disclose the A and B combination such that A or B is described to be the invention?I would argue 112, p.2 (b) is there an apt rejection because the claim language actually does not describe what the applicant regards as his invention. But, as we know, PTO will issue instead a 112, p.1 (a) rejection based on written description.
In this particular case, it does mention “A and/or B” in the brief summary where it regurgitates claim 1. Interestingly enough, this is the *only* place it mentions B (the common contractual arrangement) at all.
hmmm not quite; its also on page 9 of the original spec and the relationship of the “affiliated” sites is discussed at length on pages 15-16
FWIW I brought the decision to Dennis’ attention since I know a lot of practitioners frequent this blog and might be interested in picking up a favorable piece of precedent they can use… I continue to be amused by the random tangential “attacks” that seem to be uncontrollable by some members of my whiny jealous fan club I’ve developed here too LOL
my whiny jealous fan clubYou should keep your fantasies between you and your shrink, Nick.a favorable piece of precedentLOL. Most of us just know how to write claims in the first place. But thanks for bringing this piece of junk to everyone’s attention.What’s going to be the name of your next shell company and who are you planning to threaten first?
innuendo: an allusive or oblique remark or hint, typically a suggestive or disparaging one.(and contrary to Malcolm’s assertions, this is not a post showing off my “learned a new word,” but merely my little way of showing Malcolm’s typical claptrap of Accuse-Others-Of-That-Which-He-Does)And yes, Malcolm, you still clearly have not answered the questions put to you. Do you know the controlling law as to the exceptions to the printed matter doctrine? LOL, why the duplicity?add: It is clear that Malcolm does not want to answer a simple direct question concerning what should be a basic understanding of law on a topic that Malcolm so desperately wishes to pontificate upon (for that matter, Ned’s silence on this is also deafening). A less simple question of “Why the duplicity?” then is not likely to be answered (by Malcolm), but the answer is self-evident given the body of ‘work’ provided by Malcolm. (and ‘pathetic’ is an apt description of that body of ‘work’)
Oh, lookie! TB learned a new word (again) and he’s apparently struggling to find a way to use it properly.Fyi, Nick: this guy is what your actual “fan club” looks like. Enjoy.
I think you have been made a fool of again.
Malcolm is a self-made man.I merely highlight the f001 that he makes of himself.In other words, he has all the power in the world within his grasp to eliminate a substantial amount of poor quality blogging on these threads. He just needs a little bit of intellectual honesty.
An applicable concept here is “shame.”Malcolm is quite literally shameless. That’s not a good thing.http://www.thefreedictionary.c…
LOL see, – I knew you’d be the first fan boy to respondFWIW, I’m happy to report my “junk” invention of matching ads to content of search results has been adopted by such ….”trolls” as Yahoo, MSFT, Google and others:link to grupoweb.upf.es… – See e,g, page 12Oh, the authors just happen to include Dr. Broder, a distinguished Fellow at Google:link to linkedin.com…and a bunch of other senior scientists, albeit a few years after the factSo I submit my “junk” is in good company. But thanks for caring!
Or to relate it to something you might understand:link to goo.gl MATCHING BY AUGMENTING A SEARCH QUERY WITH KNOWLEDGE OBTAINED THROUGH SEARCH ENGINE RESULTS
my “junk” invention of matching ads to content of search resultsYou didn’t invent that, Nick. The concept of providing ads to people based on information about those people was “adopted” from ancient business practices.Are you really this arrogant and dense?a distinguished Fellow at Google:The term “jumbo shrimp” leaps immediately to mind. Nobody cares that some bottom feeder from Google shares your illusions. my “junk” is in good company.Yes, you are surely not alone. I’ve been saying that for years.
Mr. Gross, did you get a separate 112, p.2 rejection related to the claim element beginning with “further” and ending with “said common content topic?” Can you give us one example where the is no common content topic in a collective and yet the search engine is programmed for responding to “said content topic?”
greetings Ned – the act of rendering search results in response to a query and rendering ads TO such search results are two entirely different operations – that’s pretty standard – so the SE always responds but may not have terribly relevant useful (ala Google)
JNG, it looks like my replies to you have been swallowed. But you really need to pay attention to this issue before you pay the issue fee. Otherwise, you will have to file a reissue.
Greetings Ned,first, I think you are overly limiting the phrase “common content topic” by suggesting it only has a meaning in the first limitation; that’s not accurate; it is introduced there, and even if it is not used as a basis for forming a collective, it IS a common parameter later used by the search enginethink of it this way: in the first clause, we could explicitly agree thru K that both of us will be treated as one entity by the search engine; or, the search engine itself may unilaterally decide to lump us together based on some common content topic; or… both could occur. Remember, websites don’t have complete control over how SE index their pages.the second limitation makes reference to how the search engine uses the common content topic; it is completely unrelated to whether/how the website members themselves may have decided to collectivizeI think the confusion is that you are thinking that the term refers to an element that is conditional, but it is not; it is introduced in the claim as a common parameter but for two different purposes – even if it might be used for only one step – so regardless of how the collective comes about, the SE uses a particular methodology in considering how to respondanyway, thanks for the note back, I appreciate your interest and as always I will take a look at the claims before they are birthed to see if they can use improvement – a second pair of eyes like yours always helps and your constructive input is appreciated
Mr. Gross, the way you might solve the problem is to make the referring language to be identical to the referenced language:”said at least one of a common topic and/or a common contractual arrangement.’ If that does not make sense from the way your software operates or from your description, you might want to consider simply removing “common contractual arrangement” from the claim now before the claim issues. You will have a hard time if you have to file a reissue.
I didn’t realize this was precedent if it is a non-p decision. Likewise, I’m not 100% sure that a decision making the examiner give you an objection is going to have the effect you or other attorneys wish it to have.
I was incorrect for me call it “precedent” per se in the legal sense, although in my experience it is rare for me to show an Examiner a recent case on the exact same language and not have them seriously reconsider looking ….foolish.
“Looking …foolish” is one of 6’s best ‘character’ traits.
One must wonder why MM does not write a patent application that includes functional claims to cover what social network sites will look like in 5 years….why is that MM?
what social network sites will look like in 5 yearsPretty much like they do now except it’ll be harder to avoid the ads (unless you pay, of course). In other words, it’ll evolve in the same way that every other corporate run “site” with information transmitting capability has evolved throughout history.As to why I chose not to become a bottom feeder and exploit the opportunities presented by our broken patent system by placing additional unnecessary stresses upon it, that’s just how I was raised. Life is a series of choices. Maybe Nick believes he’s actually an important inventor in the history of computing technology. I doubt he’s that delusional. I think he knows that he’s a quintessential example of a patent troll, and like his idol Eric Spangenberg, he’s going to grab as much as he can, while he can, without regard for what anyone else thinks or feels, including the people he threatens to sue with his junky patents.
“that’s just how I was raised”Does ‘how you were raised’ also then explain your intellectual dishonesty?Clearly Malcolm, how you post so overshadows anything related to what you post that you have to be delusional not to see what a joke you are.
Another sign that Malcolm has not been to law school. He introduces his character into the debate, then turns tail and runs when that same character (or lack thereof) is rebutted.More self-induced Malcolm FAIL.(pay attention 6 – as this is one of the delicious ironies that Malcolm continuously serves up)
The Board decision is a good one because it follows logic. If you read “at least one of A and B†as “A and B†or “both A and B,†where both are required, then you effectively read it as “at least one of A and at least one of B,†which makes no sense given that A and B are singular. In other words, in this misinterpretation, “at least one of†is improperly rendered superfluous or converted to “both†because the interpretation is the same as “A and B,†where both are required. So, if you mean “A and B,†then you should not add “at least one of.â€Saying “at least one of A and B†is different from saying “A and B.†A and B logically requires both while placing “at least one of†in front qualifies A and B by saying both A and B are selectable options from which one or more of A and B are selected. I’ve had plenty of cases that did not disclose B as a selectable option so I was forced to change A or B to A and B to make both of them selectable options the prior art did not disclose. “A or B†only requires that either A or B be an option. Unless A and B are expressly declared as required selectable options, A or B does not require both to be selectable options in the logic. When the USPTO gives “A or B†its broadest meaning, a reference with only A or only B discloses it. As for “at least one of A or B,†saying “A or B†already requires only one, but to avoid an interpretation of “only one of A or B†you can add “at least one†to assure interpretation as one or both. However, as far as the broadest interpretation by the USPTO, you still did not change anything. Any reference disclosing only A or only B still discloses “A or B†and “at least one of A or B.â€
The biggest problem with the Board’s decision is that it was four-years in the making The biggest problem is that this issue was ever appealed. Why not just amend the claim? I guess if you’ve got the time and money and you don’t have an actual product to protect, you might as well just the pound the table.websites characterized by a common parameter including at least one of a common content topicI haven’t looked at the spec but I’m dying to see how the term “common content topic” is defined. [Added: Surprise! It’s not defined at all — nobody could have predicted; congrats to the Examiner for focusing on the really important claim terms]. a computerized business method of serving content appropriate advertisementBecause shoving content appropriate ads in your face wasn’t possible until computers came around.
“The biggest problem is that this issue was ever appealed. Why not just amend the claim?”Uhm, just a guess, but maybe because the rejection was improper and applicant was entitled to the claim as is.But do please keep s#cking at this.
Uhm, just a guess, but maybe because the rejection was improper and applicant was entitled to the claim as is.”Tell me, Mr. hospitalized pedestrian, why did you cross when that car was coming?””Because the light was green, so the car’s trajectory was clearly improper, and I was entitled to cross as I did.”Why is it such a challenge for people to decide between being right and being smart?
Please explain, if you can, why you consider amending a claim that doesn’t require amending to be “smart.”Pretty lame analogy, BTW. The sort I’d expect from an examiner.
Please explain, if you can, why you consider amending a claim that doesn’t require amending to be “smart.”In this case, how much claim scope did the applicant retain by not amending, and how much money did it cost him?
Whoa – red highlighting? You ARE smart!
Are you looking for exact figures? Your first mistake is assuming that the examiner would have removed the rejection in view of an amendment. You don’t know that. It’s probably likely the examiner would have, but it’s not a certainty. Shenanigans abound at the PTO.Your second mistake is assuming you know what the applicant knows. If the applicant decided that the “retained scope” was worth more than the cost of the appeal, who the h#ll are you to second guess that? Who died and appointed you “smart”?Your third mistake was that idiotic analogy. We’re talking about whether you should appeal some imbecilic rejection from a patent examiner because the rejection is improper, not whether you should step in front of a speeding car because you as a pedestrian have the right of way.You s#ck at this even worse than Mooney.
Are you looking for exact figures?No. Are you looking for an argument? Because John Cleese is just down the hall. Room 12.
Not looking for an argument with you. I generally take George Carlin’s advice in these situations: ‘Never argue with an idiot. They will only bring you down to their level and beat you with experience.’
It’s less arguing with an idiot and more feeding IANAE’s addiction of Calvinball face spikes.
It only cost him an hour of writing responses. He already had to appeal.
Exactly. If you have to appeal other silly baseless rejections, why not just include the siliest, most baseless rejection of them all?
Correct; and you can see I started off with this point in my initial brief b/c it was the weakest and clearest error – a trivial point that should have never made it that far
Nice to have our subject join us here on out interbuts hangout.
So, in other words IANAE, don’t stand up for your legal rights?
“Why is it such a challenge for people to decide between being right and being smart?”LOL – IANAE’s irony meter is obviously broken as well.
Like most here I’m always willing to compromise where I think it makes sense and there is some room on the other side; here, there was no “give” whatsoever on the PTO side so it made no sense to amend and end up with a MUCH narrower claim
made no sense to amend and end up with a MUCH narrower claimWith respect to the alleged indefiniteness issue, it doesn’t seem you would have lost any claim scope by fixing the “and/or” language.
Malcolm, there was a very interesting issue litigated in Institut Pasteur that I’d like your views on. The claim required a particular way of cutting and inserting DNA into chromosomal DNA. A reference showed introduction of target DNA into a bacteria cell, and its incorporation into and later temperature activated excision from the chromosomes of the bacteria cell. It also showed plasmid introduction and temperature activation of an endonuclease that cut the excised target DNA and allowed recombination with a disease resistant gene using target DNA proteins produced by the excised target DNA to repair the cut. There was no attempt to cut the target DNA while still in the chromosomes.Testimony of junior members of the research team were to the effect that some cutting of the target DNA while still in the chromosome occurred because the temperature activation of the endonuclease occurred at low temperatures. The lab director stated that the experiment never intended to cut chromosomal DNA, and did not in fact do so because the bacteria would have died, citing reasons.The Supreme Court held in Tilghman v. Procter that unintended, accidental and unappreciated production of a compound did not anticipate. Rader in Schering confined this case to whether the compound was produced at all and held that when a known process necessarily produced the compound it inherently anticipate regardless of whether anybody appreciated it.Your views: is Rader right or is he ignoring the Supreme Court once again?
Rader in Schering confined this case to whether the compound was produced at all and held that when a known process necessarily produced the compound it inherently anticipate regardless of whether anybody appreciated it. Your views: is Rader right or is he ignoring the Supreme Court once again?If the compound, as claimed, previously existed then the claimed compound is not new and it can’t be protected by a patent. Isn’t that consistent with Supreme Court precedent?
No.
Hmm.Is there a Supreme Court case other than this Tilghman v. Proctor case that suggests you can claim old pre-existing compositions of matter that arise naturally from a known process? The result Rader reaches, at least, is consistent with the result in Myriad (although Myriad was framed from the eligibility side)…
Check my response under 102(g) as prior art.Regardless of Tilghman, there are number of cases where pre-existing products lost to history are patentable regardless. The real test of prior art is “possession” by the public. The first to recognize or rediscover the product is the inventor. Accidental or unintended production has never been anticipation. Rader reverses very long established precedent.
The first to recognize or rediscover the product is the inventor. Accidental or unintended production has never been anticipation. Rader reverses very long established precedent.I haven’t read the case you’re talking about. But the claim is the key. If the composition as claimed (<–key point here) is shown to have existed in the prior art as the natural (even if unappreciated) result of some prior art process, I don’t see how that claim is patentable. On the other hand, if your claimed composition is distinguishable (e.g., modified or more purified) than the “unappreciated” composition naturally produced by some prior art process, then you should be in really great shape (assuming there’s no other close prior art).
I would suggest Malcolm that you actually read Tilgman v. Procter. I think it was established that the claimed composition was produced by prior processes, just that no one intended to produce that product and its benefits were unappreciated.Think that a claim to vulcanized rubber was held to be anticipated by a newspaper article describing a plantation fire coupled with expert testimony that vulcanized rubber had to be produced in that fire.
I think also that as a corollary would be that a prior process that accidentally produced the claimed product would not be an infringement of a product claim unless that product accidentally so produced was then “harvested” for sale by the accidental producer. I agree that the situation becomes more difficult in the case of drugs where the product being claimed is a natural by-product of the body acting on a drug that was in public use.
“The result Rader reaches, at least, is consistent with the result in Myriad (although Myriad was framed from the eligibility side)…”Re: Myriad. The court premised its holding on the composition being “of nature” not based on it being in public use, but unknown. Consider what Newman had to say about the denial to take Schering en banc,”I write to state my concern for the panel’s departure from the established law of anticipation. The court holds “anticipated†a novel chemical compound (DCL), a compound not known to the prior art and that did not previously exist. The Schering inventor discovered it in vivo as a degradation product of loratadine, isolated it, determined its structure, and found its biologic properties. The panel nonetheless holds that this new compound is unpatentable on the ground of “inherent anticipationâ€â€¦The law is that a product is “anticipated†if it is not new. Conversely, it is not anticipated if it is new. A new product may of course be unpatentable based on obviousness, but it is not subject to unpatentability for lack of novelty. No precedent supports the position that a product whose existence was not previously known and is not in the prior art is always unpatentable on the ground that it existed undiscovered. If the law is to be changed in this direction it must be done en banc.”The point where Rader would beg to differ is that the product did exist. Now, is Myriad truly limited to natural products?
More than just that Ned.Malcolm (once again) misses the distinction between patent eligibility and patentability. As I so patiently tried to teach him, the exception in 101 is not a time-dependent, prior art based one.As to your Tilghman v Proctor conversation, are you not forgetting about the element in the inherency doctrine of something necessarily being present? You seem to be getting the doctrine wrong by over-reading the instant case. You do have a tendency to do that.As noted in MPEP 2112: “[T]he 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.†Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).and”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. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) (rejecting the contention that inherent anticipation requires recognition by a person of ordinary skill in the art before the critical date and allowing expert testimony with respect to post-critical date clinical trials to show inherency); see also Toro Co. v. Deere & Co., 355 F.3d 1313, 1320, 69 USPQ2d 1584, 1590 (Fed. Cir. 2004)(“[T]he 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.â€); Abbott Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed.Cir.1999) (“If a product that is offered for sale inherently possesses each of the limitations of the claims, then the invention is on sale, whether or not the parties to the transaction recognize that the product possesses the claimed characteristics.â€); Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1348-49 (Fed. Cir. 1999)
Clearly, anon, a property of a composition in public use, or an effect of a process in public use, newly discovered, cannot make that same composition or same process repatentable.There is a distinction we make. We are talking about a composition that was unknown, but which is a manmade byproduct of a known process. We are not trying to repatent that know process, nor make it an infringement. We are suggesting that the discovery of the product itself, previously undiscovered, makes it patentable.