In Cohesive Technologies, the Federal Circuit issued a reminder that the novelty analysis of 35 U.S.C. §102 is separate and distinct from the nonobviousness analysis of 35 U.S.C. §103(a). The court notes that some prior art evidence – such as inherent elements of a disclosure – used for anticipation argument may not be used in obviousness analyses. That result is in tension with the traditional understanding that § 102 material may be used for §103(a) analysis.
In a recent e-mail, Professor Isaacs (NKU) saw that tension as a reason to for courts to take a fresh look at the text of §103(a). This is especially timely in light of the recent cases such as eBay, KSR, and MedImmune where the Supreme Court had no trouble altering longstanding precedent.
The most glaring problem with the current interpretation of § 103(a) involves post-invention art and secret prior art that are available as §102(b)/§103(a) and §102(e)/ §103(a) references respectively. These two allowances are contrary to the plain language of §103(a) because the statute focuses on what “would have been obvious at the time the invention was made.”
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35 U.S.C. 103(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in §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. … |
Under a plain reading of §103(a), post-invention references cannot negate patentability because they were not available “at the time the invention was made.” Similarly, secret prior art – almost by definition – could not be known by one of ordinary skill in the art – especially under the Supreme Court’s new “common sense” approach to obviousness.
Of course, these arguments have been tried before – and failed.
- In re Foster, 343 F.2d 980 (C.C.P.A. 1965) (cert denied) (creating §102(b)/§103(a) prior art)
- Hazeltine Research, Inc. v. Brenner, 382 U.S. 252 (1965) (creating §102(e)/ §103(a) prior art)
Perhaps the time is right for a challenge.
I am an inventor. I don’t know the legal language for my arguement. Can one of you guys help me out?
My claims are being rejected under 35 U.S.C. 103(a) saying that my invention would have been obvious to about ten previous inventors whose inventions are nothing like mine. Since my invention involves telescoping bars, my examiner pulled up ten previous patents that have telescoping bars and then he says that the important parts of my invention would have been obvious to all these other inventors. How can you dispute an opinion of obviousness? If what he says is true there would be only one invention allowed that has telescoping bars because all the following inventions would have been obvious to the first inventor.
Pardon my naiveté, but why doesn’t In re Foster (C.C.P.A. 1965) foreclose an argument regarding 102(b)/103? It seems right on point, analyzed the legislative history of 103, well-reasoned and binding authority on the CAFC (although C.J. Worley’s dissent criticizes the majority’s reliance on legislative history because of the clear language of the statute).
Eye, comment at 8:44 PM, I find your explanation persuasive. Here’s a complementary idea to consider, think of PHOSITA also as a Venn. PHOSITA A knows a little more than PHOSITA B in your example, so the Venn of PHOSITA (used in a rejection) includes A+B and that since PHOSITA A+B is a useful legal fiction anyway, it can be defined to encompass the most that any artisan could possibly know. Just a thought. DC, Always like your stimulating and entertaining frays, I learn more each visit, not being a kissup, just appreciative you created the site.
Eye, you will forgive me for NOT starting all over again. My impression is that by now other readers have a pretty fair idea how European FTF works. One advantage of FTF, shared by the European way with novelty and obviousness, is that definitive opinions on validity and FTO can be reached, as soon as the A/WO publishes, without any need for evidence from the named inventor. I think that is an aid to business planning (although, of course, bad news for attorneys and litigators). But then, I’m biassed.
“To be fair to the inventor, the only stuff that can be used in the attack is stuff that any member of the public could already have drawn on, at the filing date of the claim under scrutiny.”
Doesn’t A count as a member of the public? In America we say “yes,” since if A truly invented it first, then B’s claim is de facto obvious or anticipated based on the filed but unpublished application – a determination made ex post when A’s application is published and applied against B.
“To be fair to the inventor, the only stuff that can be used in the attack is stuff that any member of the public could already have drawn on, at the filing date of the claim under scrutiny.”
Sorry Max, but from the sound of it, the EPO must issue a lot of patents with claims to the same stuff since 102(e) type art (art that is pending and unpublished at the time of filing) is probably one of the most oft cited kinds of art, particularly in fast-moving technologies.
Aside from opposition, how does the EPO handle duplicate claims? In the U.S. we have interference and swearing behind, both of which are where the FTI character of U.S. practice comes into play.
It seems that FTI is much fairer to the inventor since it attempts to resolve these type of priority issues backward in time based on evidence in order to determine the true inventor and not just based on some arbitrary filing date and g-d knows what procedure for the situation we have been discussing (which I hope you will shed some light on).
So, once again, Eye. Where I come from (First to File) the first filer (A) kills the novelty of anything B later filed. B can proceeed only with what part of its filing is still novel over A. In Europe, that’s what our “102” Art 54 EPC is for.
Now to obviousness, our Art 56. That’s for blocking out obvious stuff before it issues from the PTO. To be fair to the inventor, the only stuff that can be used in the attack is stuff that any member of the public could already have drawn on, at the filing date of the claim under scrutiny. The filer can’t complain, if I can defeat the claim with an attack composed entirely of stuff already made available to the public before the claim arrived at the Patent Office.
Thus, I have no problem with 102(e). I just have a problem with a 103 attack put together with a combo that includes a 102(e) doc.
But then I have a problem with FTI as such, so I’m biassed. I just want a system that I can explain to clients with a straight face, and with some chance of their becoming an enthusiast for the patent system. I get that result in Europe, over and over, but I don’t even try to explain to them the US definition of the prior art. Waaaay above my simple little head.
“Mr Karp yes but…..All the internet in the world won’t make available to the PHOSITA the content of US patent applications already filed but not yet published. Why they should serve as the basis of an obviousness attack is beyond my comprehension.”
Max I’m surprised at your resilient lack of understanding here, particularly as a European (or at least you play one on PatentlyO).
If A filed an application on January 1, 2009 and B filed an application on December 1, 2009 and a couple of years later, A is cited against B under 102(e) its because A’s technological disclosure is first in time with respect to B whether or not B had a chance to look at the disclosure – its a pure first-to-file question.
The 102/103 inquiry is not so centered on what was available to the PHOSITA, but rather whether the invention itself is *actually* novel or non-obvious.
If you take your question to the extreme you’re saying that B is entitled to a claim even though A disclosed it before B filed, because A’s disclosure, though first in time, was not available to B.
That just doesn’t make sense in any system.
“DC–With 102(b)/103, we’re talking about whether disclosures that occurred after the invention. How could those post-dated publications have any impact on whether the invention was obvious “at the time of the invention?”
I agree that the 102(b) art is the most problematic to deal with. It’s fair to argue that those post-dated publications should be irrelevant, but I don’t think that leads to the conclusion that 103(a) does not include them in the “prior art”.
103(a) says to compute the differences between the invention and the prior art and then to evaluate only those differences for obviousness at the time of the invention. Yes, it does seem to be illogical to reduce the scope of those differences by using prior art that was not even in existence at the time of the invention, but I believe the statute can be read to allow doing just that illogical thing. Further, there are policy reasons for the seeming illogic.
Max,
Section 102 criteria is still used to determine what art may be used in a 103 rejection. 103 rejections based on art that would only be admissible under 102(e) is permissible, unless the subject matter of the 102(e) patent was commonly owned at the time of its creation and invention by the Applicant.
Mr Karp, You’ve lost me there. I thought 102 was novelty, and 103 was obviousness. So how does 102(e) have anything to do with obviousness? Sorry if it’s me being so dim.
random said (with his usual level of clarity): “Congress complicitly agrees with the procedures at the office iirc. Right/Wrong? Who’s the idi0t again? If you insist upon saying “The PTO in conjunction with congress” then fine. Maybe then you can address the issue of congress not standing up for its own law not being applied properly for year after year if they didn’t think it was applied entirely properly. And, I should add, how would they miss such a blatant ‘inconsistency’ in the application of the law and what the law says if it wasn’t what they intended?”
random, you’re displaying your ignorance of the concept of separation of powers again. You see, Congress passes the statutes. The Executive Branch, which includes the Administrative Agencies, enforces them. The Judicial Branch interprets them. However, it only does so when someone (with standing) raises the issue.
Congress is certainly not charged with ensuring that the PTO is enforcing the statutes correctly, although I’m sure it could investigate the situation if it so desired. So Congress’ “complicity” is irrelevant.
So, I stand by my original statement, which was to the effect that we don’t use administrative regulations to interpret a statute.
To answer your specific questions: (1) Wrong. (2) You are. (3) Perhaps because it has more important things to worry about.
pds..neither Adams nor Spormann show any negative treatment in Lexis.
The question of proof is altogether different. That just goes to the question of whether the inherent property exists in the first place, not to the question of whether an admitted inherent but unrecognized (as of my filing date) property should be available in an obviousness rejection of my claims.
Feel free to confirm the cases I cite if you like:
In re Spormann 363 F.2d 444:
“The board apparently thought that the minimizing of sulfate production would be inherent in the process of Friedrich et al. However, this is no support for a rejection for various reasons. Friedrich et al. make no mention of it, as the board conceded. Their process is not appellants’ process. It is a reaction between solid, powered material and gas, the only water present being chemically combined water and hygroscopic water; appellants react sprayed solution and gas. As we pointed out in In re Adams, 53 CCPA 996, 356 F.2d 998, 148 USPQ 742, the inherency of an advantage and its obviousness are entirely different questions. That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.”
But see also In re Dillon, 919 F.2d 688 which goes the other way (as do, I suspect, several cases cited in the MPEP). I share the dissent’s view in Dillon.
Max,
I agree. One of the difficult things to explain to a client is a 102(e) rejection.
“pds, can you confirm the legality of atch’s holding? MM, can you confirm the illegality of it?”
Inherency requires proof. link to uspto.gov
“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)
Mr Karp yes but…..All the internet in the world won’t make available to the PHOSITA the content of US patent applications already filed but not yet published. Why they should serve as the basis of an obviousness attack is beyond my comprehension.
aahhh,
So “inherency” may be in the domain sliver of 102 that is not in 103 (First Venn diagram in the “Anticipated yet Nonobvious” thread).
Although this sliver seems very slippery. How does one confirm “known” or “unknown” in an inherent aspect of an “old” reference?
pds, can you confirm the legality of atch’s holding? MM, can you confirm the illegality of it?
and not to confuse, but ASE, does your statement “If the reference does not qualify as under 102, it can’t be used in an obviousness analysis.” have a typo? It seems that your Venn diagram would have the 103 domain totally within the 102 domain and flies against most everyone else’s views here.
With the combined effects of cumulative and readily accessible knowledge (via the Internet and sophisticated search engines) that which could reasonably be considered unknown to a PHOSITA has shrunk exponentially in the last decade.
MHO, YMMV, etc.
Agreed. All goes to show that 1) great care is needed when speaking of what is “known” because it is one exercise to establish what is “old” and an utterly different one from the exercise to establish what is “obvious”. Both exercises need to start out from a logical starting point. To do that, we have to decide first “What is 102 for?” and “what is 103 for?” Prof Duffy shows that there was no concept of “obviousness” when patents systems were still in their youth. Now, however, obviousness has superseded novelty as being the filter of choice, to keep the road of technological development free from unjustified patent monopolies. So, why have 102 at all? If it’s not simply to duplicate 103, it should have a job to do, that’s 1) necessary 2) complementary to 103 and 3) more than just to give more scope for lawyers to argue.
… atch …
That’s the best summary yet of the two threads on this topic, including all previous comments.
MPEP reader and anon…you can find cases going both ways on this point–particularly older CCPA cases. Many of these say that the inherency of an advantage and its obviousness are entirely distinct questions. That which may be inherent is not necessarily kown and obviousness cannot be predicated on what is unknown. See for example Spormann and In re Adams. I don’t think these cases have been overruled and I do think the law on this point needs to be clarified. To my mind, it doesn’t make sense that an inherent AND unknown property can be used to establish obviosness. I think some more recent cases have gone the other way as you point out.
Dear Anon help me please: what are your “certain” circumstances? I had thought that obviousness was ALWAYS to be judged relative to the state of the art and that the art ALWAYS includes prior publications and so (of course) ALWAYS what the PHOSITA finds in them, whether implied, inherent or explicitly recited in the document. Isn’t MPEP reciting trite law here, which remains uncontradicted by the muddled statements of the Cohesive majority (case name Cohesive a bit ironic, eh, in the context of the impassioned disagreement between the majority and the dissent?)
The most important post here, made by MPEP reader, is that inherency can be used in a 103 rejection in certain circumstances.
Thanks chaps. Eye, the gap between our mindsets seems too big to bridge. Mine comes from the EPC fundamentals, that on obviousness we need first of all a claim and a date. Then we look at the prior art universe as of that date. That universe is everything that by that date has been “made available” to the public, and excludes anything that has not yet been “made available” to the public by that date. Then (to eliminate subjective fog, and nurture legal certainty) we take an objective, notional member of that public. Let’s call her our PHOSITA. This construct does not have the attributes of a real person, as we all know, but at least it has clear legal definition. Now, drawing on the totality of the prior art universe, was anything inside the content of the claim in view “obvious” to that notional PHOSITA at that date? I find that intellectually satisfying, and easy to explain to clients, who then grasp the logic of the law. My background in the EPC is woefully inadequate for debate with you about obviousness in the USA. I just ask the questions in the hope of education and enlightenment.
In order to express how things *should* work you have to know how they do work. And Mooney doesn’t qualify in that department.
Nice try, yuck yuck, LOL and all that. I can’t understand you with your foot, or whatever that is (crack-pipe, rubber chicken, …, ??), in your mouth.
At one point Mooney, I really wanted to give you the benefit of the doubt, now I realize you are just one incredibly lame unit who doesn’t have a clue, just a bad attitude, a lot of sour grapes toward people making money, and some kind of axe to grind against patents.
Max, I ha te to break it to you but we do in fact agree. I wasn’t expressing my view of how things *should* work (mine are close to yours, including consideration of the timing issues you raise) but rather my understanding of the sentiments underlying the status quo.
“Speaking of strawmen, you chose the weakest point that I made to try to refute.”
Uh, that’s not a “strawman.” And yes you made some weak points and I picked the weakest one, destroyed it, and you *still* kept digging. LOL!
Provided A survives the 102(e) inquiry, if its an obviousness attack, then the objective difference between A’s disclosure and either the knowledge generally available or another reference in combination with A will make or break patentability vis a vis obviousness.
Again, not really sure if that answers your question.
that should be “A’s” not “A7s”
Max, I’m not sure exactly what you’re asking. A7s 102(e) reference, even if unpublished when B files, represents objectively what it known at the time B files, even if by A alone. Also, chances are in a 102(e) context, the priority or seniority date for A will antedate B’s constructive date of invention (e.g. filing date) If B can claim priority to a date earlier than A’s earliest date of English language publication than B is still entitled to the claim. If A’s original document was non-English language, then 102(e) does not apply and A can be removed as a reference.
I have a question that picks up on the Mooney contribution above, at 6.48 pm. There, it is said that 102(e) docs are relevant to what was obvious at the date of invention because they are evidence of what the PHOSITA “knew” at that date. Now I can live with citation of a post-published doc as evidence of what was common general knowledge for the PHOSITA on the date of the claim. What I have difficulty with is using the brilliant contribution to the art, non-obvious invention of A, as recorded in a 102(e) citation, as the foundation of an obviousness attack on the invention of B, one day later. On the day of B’s claim, the PHOSITA did not have any chance to build on A’s as yet unpublished genius, so it’s not fair to kill B’s claim using A’s genius. I just don’t see the logic and, these days, to convince the public of the essential worth and integrity of a patent system, we need to keep it logical, and the obviousness test transparent and objective.
See, I don’t always agree with Mooney. But what do you all think?
Speaking of strawmen, you chose the weakest point that I made to try to refute.
I guess its hard to argue with your foot in your mouth regarding KSR’s non-existent triviality test.
No strawman here, just a nice, but transparent attempt to deflect attention away from the fact that KSR not once mentions trivial and the fact that you don’t know what you’re talking about
You derail every thread you touch by attempting to promote some kind of crappy personal anti-patent agenda.
AllSeeingGuy “I doubt you will ever hear an examiner use the word “trivial” to describe a claimed invention.”
Maybe not. That’s your strawman to beat.
I do have 100% confidence that there are many office actions that characterize the difference between the prior and the claimed invention as trivial. Would you like to make a bet?
Nice job at derailing the thread, by the way. Show some self-control next time.
For your information Mooney, the words “trivial” and “non-trivial” are not mentioned once in the actual KSR opinion.
Bite me.
random, you might have heard it from the likes of Mr. Pillsbury himself, but that doesn’t mean its correct. You also probably heard something about “validity opinions” that doesn’t mean there is such a thing. I’m sure you also heard about Bigfoot. I myself have heard of a man who is ten feet tall called Bill Brasky.
I said its not what *the law* requires. And by law, I mean 35 U.S.C. 103. Like many if not most others who actually practice (unlike you Mooney), I’m not betting my future on what KSR argued in their brief regarding “trivial.”
You will not see 103 reworded to include a “triviality” test, and I doubt you will ever hear an examiner use the word “trivial” to describe a claimed invention. Like I said before, use of the word “trivial” is reserved for arr0gant and p0mp0us asswholes like you Mooney.
Google search “KSR” + “trivial” for a quick fact check.
“Most others will say this is a Mooney-fied perversion an decidedly not what the law actually requires. Imagine a test for “non-trivial”
I don’t have to imagine it. It’s the test outlined in KSR.
“Congress didn’t “deem it proper” that 102(b)’s not be sworn behind; Congress couldn’t care less about the procedural mechanism of swearing behind a 102(a) reference. Instead, Congress stated an absolute time bar in reasonably plain terms.”
Congress complicitly agrees with the procedures at the office iirc. Right/Wrong? Who’s the idi0t again? If you insist upon saying “The PTO in conjunction with congress” then fine. Maybe then you can address the issue of congress not standing up for its own law not being applied properly for year after year if they didn’t think it was applied entirely properly. And, I should add, how would they miss such a blatant “inconsistency” in the application of the law and what the law says if it wasn’t what they intended?
Also, All Seeing, you appear to be missing the entire point of the thread. And actually I’ve heard the explanation MM gives from more than one presentation, if that’s what he believes then he’s not nearly the only one.
So, D, who is so smart, how do you propose to establish the date of the invention reliably to get such information without it being made up half the time and also accomplish this in a legally appropriate manner under the current laws/rules? Do tell. We’re listening.
Hutz, you can explain how your enlightening comment is relevant to what I said.
Its pretty clear that what constitutes prior art is outlined in 102. If the reference does not qualify as under 102, it can’t be used in an obviousness analysis.
This is 1Y stuff. At least it used to be. Thank g-d for dumbing down. Kayton would have popped a gasket by now.
“to be patentable, an invention must be a non-trivial advance over that knowledge.”
Most others will say this is a Mooney-fied perversion an decidedly not what the law actually requires. Imagine a test for “non-trivial.”
102(g)? First to file? Get real. Are you making this stuff up as you go along?
Mooney you are beyond the lunatic fringe.
Dennis “With 102(b)/103, we’re talking about whether disclosures that occurred after the invention. How could those post-dated publications have any impact on whether the invention was obvious “at the time of the invention?”
You mean 102(e)/103 right?
I think the idea is that the references — regardless of when they are actually published (or *if* they are actually published in the case of 102(g) art) — are evidence of what those of skill knew at the time of the invention. To be patentable, an invention must be a non-trivial advance over that knowledge. Some might say that is “common sense” …
Dennis,
Does your statement “There are clear policy reasons for allowing all 102 references to be used for obviousness analysis.” put you into the second Venn Diagram camp on the Anticipated yet Nonobvious” thread?
JV — There are clear policy reasons for allowing all 102 references to be used for obviousness analysis. However, I really don’t see how you get around the words of the statute.
With 102(b)/103, we’re talking about whether disclosures that occurred after the invention. How could those post-dated publications have any impact on whether the invention was obvious “at the time of the invention?”
From 103(a)
The statute describes a comparison between the prior art and the invention, and we discuss here whether “would have been obvious at the time of the invention” limits the prior art to be used in the inquiry.
I don’t believe the words of the statute force that interpretation. Another possibility is that “at the time of the invention” applies only our assessment of what the POHSITA would find obvious given all of prior art without screening out stuff the artisan could not have gotten his hands on.
Random,
I’ll give you the benefit of the doubt of inexperience. 102(b) is a statutory bar and not a novelty bar. Its purpose is not to establish novelty, bit to support the quid pro quo nature of patents. If the invention is published or publicly used more than a year before filing, the invention has already been dedicated to the public. The inventor is no longer providing any benefit in exchange for the exclusive right provided by a patent. The year date is somewhat arbitrary (it was 2 years in the past).
Also, 102(b) is one of the only ways an inventor can bar him or herself from filing.
“The date of invention is assumed to be the filing date unless you CAN swear behind it. Congress deemed it proper that 102b’s not be sworn behind. Another way of putting it: They deemed to not give you any way to prove that your invention was made back 2 years prior to filing and they want to assume it was done on the FD if the pto has a 102b.”
Random, you’re confusing (again) the statutes with the procedural rules for implementing the statutes. Section 103 clearly says “at the time the invention was made,” not the “time at which the Patent Office assumes the invention was made, in the absence of evidence to the contrary, for purposes of searching the prior art and applying references in Section 102 rejections.”
Congress didn’t “deem it proper” that 102(b)’s not be sworn behind; Congress couldn’t care less about the procedural mechanism of swearing behind a 102(a) reference. Instead, Congress stated an absolute time bar in reasonably plain terms.
“You must remember,” random, that we don’t use an agency’s rules as a guide for interpreting the statute, even if we sometimes give deference to an agency’s interpretation of the statute. We can use legislative history to interpret a statute, but I don’t think you’ll find any legislative history that is on point, i.e., I don’t think you’ll find any mention of “assumptions” of invention dates vis-a-vis filing dates.
Please don’t attempt to lecture to Professor Crouch. Because you’re an id1ot. And he’s not.
“The court notes that some prior art evidence – such as inherent elements of a disclosure – used for anticipation argument may not be used in obviousness analyses.”
The court actually says: “And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness.”
They are not equivalent.
Plus, MPEP 2112 cites Federal Circuit case law to support that “[t]he express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.”
“The court notes that some prior art evidence – such as inherent elements of a disclosure – used for anticipation argument may not be used in obviousness analyses.”
The court actually says: “And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness.”
They are not equivalent.
Plus, MPEP 2112 cites Federal Circuit case law to support that “[t]he express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.”
“The court notes that some prior art evidence – such as inherent elements of a disclosure – used for anticipation argument may not be used in obviousness analyses.”
The court actually says: “And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness.”
They are not equivalent.
Plus, MPEP 2112 cites Federal Circuit case law to support that “[t]he express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.”
“These two allowances are contrary to the plain language of §103(a) because the statute focuses on what “would have been obvious at the time the invention was made.”
Um no it’s not contrary. The date of invention is assumed to be the filing date unless you CAN swear behind it. Congress deemed it proper that 102b’s not be sworn behind. Another way of putting it: They deemed to not give you any way to prove that your invention was made back 2 years prior to filing and they want to assume it was done on the FD if the pto has a 102b.
End of story. No contradiction. You simply must remember D, the “truth” makes little difference here in patent land. Only the “truth” that is deemed legally appropriate makes any difference.
Dennis — you forgot 102(g).
——-
How about (1) get rid of provisional applications (2) move to a first to file system. That’ll help to start clean things up.
The 102(g) case law with respect to obviousness is simply awful. The CAFC tried to be “consistent” in interpreting the statutes but their attempt to do so led to even greater contradictions than the contradiction they were trying to avoid.
The real problem is not disregard for the “time of the invention” language in 103, it’s the disregard of the “THE INVENTION” language in 102(e) and 102(g)(2). Non-anticipating prior art references by definition do not describe THE INVENTION, therefore they should not shunted into 103(a) consideration via 102. When 103(a) refers to “the prior art” it does not expressly refer to “ALL art that anticipates under 102” and should never have been construed differently.
The 1999 Act did some work — “Effective November 29, 1999, subject matter which was prior art under former 35 U.S.C. 103 via 35 U.S.C. 102(e) was disqualified as prior art against the claimed invention if that subject matter and the claimed invention “were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.””
This amendment could easily be interpreted as congressional intent that 102(e) should apply to all other obviousness cases. However, the usual rule is that congressional intent does not trump the words of a statute.
I am not going to look this up, and I have not looked at it recently, as it has not been an issue for me recently, but I believe the 1999 AIPA Act removed 102(e)/103 art from consideration, correct? Or am I misremembering something?
Patent Agent — Good question. You cannot swear behind a 102(b) reference. Those references are created by an absolute statutory bar keyed on your filing date, not your invention date.
I’ve always thought that the plain reading of the statute should remove any post-invention references from consideration. But isn’t that what swearing behind is for? Or am I missing something?
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