By Dennis Crouch
ClearValue v. Pearl River Polymers (Fed. Cir. 2012) (Opinion by Judge Moore, joined by Judges PROST and SCHALL)
This case presents a classic law school hypothetical of an invention that is anticipated but likely not obvious. According to the appellate panel, the prior art fully discloses and enables the invention but also teaches that the proposed invention is impractical and does not work well. As discussed below, however, the anticipation holding itself is somewhat controversial because it is based upon the conclusion that a broad range disclosure found in the prior art ("less than 150 ppm") anticipates the narrower range found in the claims ("less than 50 ppm").
A jury found ClearValue’s patent valid and infringed and the district court denied the defendants motions to set the patent verdict aside. On appeal the Federal Circuit reversed based upon the appellate court's own factual finding that a single prior art reference teaches and enables each element of the asserted patent claim.
Background: The patent at issue is directed to a process for clarifying water using a flocculated suspension of aluminum along with high molecular weight quarternized polymers. The listed inventor, Richard Haase continues to be an owner of the patent and also CEO of ClearValue. Haase has filed more than 50 water purification and energy related patents and is also a graduate of the University of Missouri (ChemE + Mathematics + Economics). The defendant, Pearl River was once ClearValue’s customer but later began making its own version of the patented process. ClearValue and Haase sued for patent infringement and for trade secret violation (for using the process without authority even before he filed for patent protection).
Anticipation versus Obviousness: The appeal focused on anticipation. Pearl River argued that all of the elements of CV's asserted claim were previously disclosed in U.S. Patent No. 4,800,039 (Hassick). The jury found otherwise. As a matter of procedure, a jury's verdict must be supported by "substantial evidence." If not, it must be set aside either by the district court or on appeal. At trial, the defendants had presented their case that Hassick taught each element of the claimed invention while the plaintiffs pointed only to "teaching away" found in patent. Unfortunately for the plaintiffs, "teaching away" is legally irrelevant to the question of anticipation. See Celeritas Techs., Ltd. v. Rockwell Int'l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Rather, under 35 U.S.C. § 102 a claim will be anticipated and therefore invalid if a single prior art reference describes "each and every claim limitation and enable[s] one of skill in the art to practice an embodiment of the claimed invention without undue experimentation." Quoting Am. Calcar, Inc. v. Am. Honda Motor Corp., 651 F.3d 1318, 1341 (Fed. Cir. 2011).
Genus Species Anticipation: The only gap in the prior art disclosure was that Hassick generally disclosed "low-alkalinity systems (i.e., 150 ppm or less)" and "alkalinity of between 60-70 ppm" while the asserted patent claimed "alkalinity less than or equal to 50 ppm." In its 2006 Atofina decision, the Federal Circuit addressed a similar genus-species situation involving a narrow claimed temperature range and a broader temperature range found in the prior art. Atofina v. Great Lakes Chem. Corp., 441 F.3d 991 (Fed. Cir. 2006). In Atofina, the court held that a broad genus range disclosure in the prior art did not anticipate the narrow species range claimed. There, both the hypothetical “person having skill in the art” (PHOSITA) and the patentee agreed that there was something special or “critical” about the claimed temperature range. The court distinguished this case from Atofina based upon its factual conclusion that “there is no allegation of criticality or any evidence demonstrating any difference across the range.” Based upon the logical analysis that the narrow range is not critically different from the broad range, the Federal Circuit held that the claimed narrow range was fully disclosed by the broad range and therefore is unpatentable.
Comment – Whither Obviousness: Interesting notion: The mechanism that the court used to distinguish this case from Atofina are very much akin to obviousness principles — looking essentially for synergy or unexpected results that make the narrow range qualitatively different from the broad range. It seems to me, however, that if these obviousness principles can be used to extend the anticipatory scope of prior art, then other obviousness principles (such as teaching away) should also be relevant.
Trade Secret Negated by Prior Art?: The Texas jury found Pearl River liable for trade secret misappropriations. However, the district court rejected that conclusion based upon an implicit admission by ClearValue that all of the elements of the alleged trade secret were publicly known at the time and found in the Hassick reference. On appeal, the Federal Circuit affirmed without further analyzing the extent that public availability of knowledge in the form of a third-party prior art document is sufficient to disqualify the knowledge as a trade secret. I am not an expert on Texas trade secret law, but the at least the Restatement of Torts is clear that a trade secret “may be a device or process which is clearly anticipated in the prior art.”
Ned:
I thank you for your candor.
Richard, all I can tell you is that I too have received what I believe to be "rough justice" from the Federal Circuit. At the time, a well-respected litigator expressed the opinion that the Federal Circuit was too committed to its agendas on patent law, arguing with each other, and insufficiently committed to deciding the cases before it on the grounds submitted, and in the fairest way possible.
Ned:
The briefs do not use alkalinity as the critical paramter; instead, the briefs literally state that molecular weight is the critical paramter.
Also, there is no statement of teaching to use high molecular weight or an effective amount of high molecular weight DADMAC in Hassick. There is but a few exmaples thrown in; wherein, the results are poor and do not show synergy.
Also still, we never stated that Hassick taught all of our claim limitations.
Still also, how can the CAFC write Texas Trade Secret Law.
Still also yet, there is no precedent to use a critical range to defeat anticipation. Critical range is used to defeat obviousness.
I just simply do not understand this.
Mark:
Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.
The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”
Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.
Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.
Is this not creating facts?
Is this not ex-post facto and a violation of the 7th Amendment?
Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?
This makes no sense to me.
Richard, I’ll reread the case, but if everything you say here is true, it looks like the patentee was given some rought justice. Perhaps they can persuade the Federal Circuit on a request for rehearing.
But it also could be a failure of advocacy. It the appeals briefs focused the Federal Circuit on the wrong issue, the Federal Circuit should not be blamed.
Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.
The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”
Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.
Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.
Is this not creating facts?
Is this not ex-post facto and a violation of the 7th Amendment?
Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?
This makes no sense to me. Someone, please help?
Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.
The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”
Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.
Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.
Is this not creating facts?
Is this not ex-post facto and a violation of the 7th Amendment?
Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?
This makes no sense to me. Someone, please help?
Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.
The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”
Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.
Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.
Is this not creating facts?
Is this not ex-post facto and a violation of the 7th Amendment?
Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?
This makes no sense to me. Someone, please help?
“Thank you SWIS but I’m not sure I go along with your view that the range 60-150 is not disclosed in a doc that claims 0-150 and includes Examples in the range 60-70.”
Great. Except that’s not my view.
At the risk of offending the blog policeman BigGuy, try reading what I wrote.
“The part of the range that goes down to zero is not very interesting to those reading the doc”
Of course this depends on the context. Why are you bothering kicking up dust like you are?
Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.
The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unexpected results and argue that an overlapping yet non-critical parameter should have been labeled critical?”
Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitations.
Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.
Is this not creating facts?
Is this not ex-post facto and a violation of the 7th Amendment?
Lastly, what about Texas Trade Secret Law? The Trade Secret Claim Standard is In re Bass, Texas 2003. How can a federal circuit judge re-write Texas Law?
This makes no sense to me. Someone, please help?
Thank you SWIS but I’m not sure I go along with your view that the range 60-150 is not disclosed in a doc that claims 0-150 and includes Examples in the range 60-70. It would depend on context of course, but suppose the numerical ranges are in respect of diameters of dinner plates or the ball points of pens or the tread depth of automobile tyres. The part of the range that goes down to zero is not very interesting to those reading the doc. The EPO tests disclosures within ranges by asking whether a reader would “seriously contemplate” working in the part of the range decisive to the outcome of the case. It can recognise that a range bounded by the upper value in an originally filed claim and a lower value drawn from an Example is indeed an originally disclosed range. Are you saying that the EPO, when it does this, is “barbaric”?
I don’t think that is the direction that Hal was leading to.
I think Hal was reading that since the example was listed at 60-70ppm, that the phrase 0-150ppm must mean only 60-150ppm.
Hal, that is a crabbed and artifical view of 0-150ppm. Such is not inherency. It is barbarism of the actual words used.
Yeager, it can “go both ways”. It does “go both ways” (at the EPO). Indeed, at the EPO what counts as the “disclosure” of a document goes exactly the same way for at least three legal situations, namely:
1. The doc is the app as filed. With your amendment of it, are you “adding matter”)?
2. The doc is said to prejudice the novelty of a claim in view. Does it?
3. The doc is your Paris Convention prio doc,. Is your claim entitled to that priority?
Having the same rule, what is the “disclosure” of a doc, in all three situations, indeed brings legal certainty.
Examiner’s often issue 102 rejections where they assert that the single reference, read as a whole, inherently has one or more elements of the rejected claim.
So, why can’t this inherency arguement go both ways?
It seems that one can argue that the reference in this case, read as a whole, inherently teaches a range of 60-150ppm. Specifically, that the statement of “less than 150ppm” must be read in light of the working example of 60-70ppm.
MaxDrei:
Actually, on that EPO annuity, it was paid on time; however, the German Bank held the funds for 4 days before putting in the EPO account.
If we loose that patent, I hope that the German Bank is real solvent.
Richard Haase
IANAE, I thought I had answered your post before, but I see that I did not.
I fully agree with your well reasoned post.
The problem, it seems to me, is that “ClearValue concedes that Hassick teaches every limitation of claim 1.” This would include the “less than or equal to 50 ppm” limitation. There is no way otherwise that “150 ppm or less” describes “50 ppm or less.”
“That is of course true, and it is not at all what I said.”
Of course, MM is the king of the strawmen. We know what we get when we read his posts.
You still miss the point MM. Calling someone else an idixt when you keep missing the point is a bit ironic.
MM: “You can’t patent an old composition simply because you found a new use for it.”
That is of course true, and it is not at all what I said.
I stand behind my earlier analysis. I’m currently enmeshed in Napier, Grasselli, Donohue I and II, Lilly, Bristol-Myers Squibb, etc., will let you know how it shakes out.
Resolve the circular definition first.
Otherwise, any answer to the question is pure nonsense.
I agree with David 100%. Fundamentals.
Malcolm, I stand educated. Thanks.
the so-called Genus was not a true Genus
You are a true Idixt, sockie.
Malcolm, if one were to prove based upon scientific testimony (taken from a professor, who of course swore to whole truth, “So help me God”) that jellyfish with that DNA existed prior to your date of invention
Ned, you don’t understand. In some circumstances (the circumstance of my hypothetical, for example) there is simply no way of knowing when the DNA in the jellyfish first evolved that sequence.
The chromosomes of all living organisms are evolving continuously. That is something that any professional biologist (outside of the Disclaimery Institute, anyway) will swear to without hesitation.
This is a scientific fact and it’s also a problem for your legal argument, which appears to assume the opposite is true for all situations.
No max we may not.
“The question isn’t whether the property is inherent, but whether such inherency is evidenced in the disclosure of the prior art.”
I lulzed, just fyi, evidence of inherency can come before or after the filing date. A fairly basic legal concept about inherency you should be aware of.
If the evidence of inherency is in the new application, that is fine to show the inherency. Also, if the evidence of inherency comes by doing an experiment in court after all the patents have been issued that is also fine to show the inherency.
But even setting that aside, if the “utility” (aka an intended use limitation if you put it in the claim?) is not necessarily achieved if you use any of the parts of the range of values then all you need do to overcome the reference is include the “utility” in the claim in whatever fashion you want to and then we’ll deal with it just like every other limitation that has ever been dealt with. Giving people a “break” on the values that have already been disclosed in the prior art is not the proper way forward.
” that prior art does not disclose use of the process over the subrange with respect to a different utility,”
Which is only relevant once you put a limitation in about the “utility”. And we’ll deal with that limitation just like the other millions of limitations we deal with on a day to day basis.
“Thus, a claim asserting a different utility than the prior art claim within a subrange, which utility is not necessarily achieved by the prior art claim over its entire claimed range, will not be anticipated.”
That depends on specifically how you claim the “utility”. Do you make it an intended use limitation? Or do you perhaps simply make it a new method step? If the later, then why even bother putting in the limitation about the range, why not just leave the part about the range out and simply put the new method step in? Presto, your claim gets allowed just like millions of others without any bs about ranges even needing enter the convo.
At the end of the day, that’s what you’ll find the whole discussion is about. People not wanting to put in limitations that blatantly will make the thing patentable in terms of a new step in the hopes of gaining a broader scope when all they should be getting is the same thing everyone else gets. Instead of simply limiting their claim with a step of “doing x” (the new utility) they want to claim the old process and simply limit it by a trivial limitation to the range of values within a range already disclosed so their coverage is (or at least might be) more broad.
Interesting advice, Boundy, never to go near non-obviousness when drafting the specification, but is it helpful to inventors? Can your advice be reconciled with the latest USPTO definition of “technological invention” (all about solving a technical problem with technical means, lifted straight from the EPO). Can you reveal in your drafting what your technological invention is, if you never go anywhere near non-obviousness areas?
ABSOLUTELY NOT. Never argue nonobviousness in the specification. NEVER.
You can make all those arguments later. In re Chu, In re Robertson. That way you get to pinpoint exactly the points you need to make.
If you do this premeptively, you have surrendedred any broader genus claim (In re Cortright) and any possibility of equivalents.
This was a goofy outlier case that will not survive. Anticipation is not obviousness.
To Have Been, or To Have Not Been has replied to your comment:
"except by prohibitively expensive reverse engineering"
non sequitur and nothing to do with the law.
Existence in the prior art is a binary question, not a 'shades of grey' question.###DWT289###
I agree, that is the holding of the Dunlop case authored by none other than Justice Stevens while still on the Seventh Circuit.
Malcolm, if one were to prove based upon scientific testimony (taken from a professor, who of course swore to whole truth, "So help me God") that jellyfish with that DNA existed prior to your date of invention, that would be good proof, in my opinion, that the jellyfish was prior art.
Regarding the form? Certainly if the form was different, it would not be a question of anticipation, but of obviousness.
“except by prohibitively expensive reverse engineering”
non sequitur and nothing to do with the law.
Existence in the prior art is a binary question, not a ‘shades of grey’ question.
wtldnr.
The clincher was MM delving off into non-patent matters.
MM, You miss the point. Possession and display may indicate that the so-called Genus was not a true Genus and your starting point is in error. When you realize that your starting point is in error, you should stop trying to apply a logic chain.
GIGO.
MM,
You miss the point. See Inviting Body Punches’ explanation.
I agree with Inviting.
Nice step by step explication.
Can we agree on some basics, including:
1. A novelty attack can be based only on matter which is disclosed by the reference (D1).
2. And is effective only when D1 enables that disclosure.
3. D1 need not be a PTO publication. And even when it is a PTO publication it need not have claims.
4. If it is a PTO publication with claims, those claims are part of the disclosure.
5. Mind you, a mere claim in D1 can never “disclose” everything that lies within its scope. Take for example “An intermittent windshield wiper”. How much of the fine design detail of present day windshield wiper designs does it “disclose”?
6. That a claim in D1 has an ambit wide enough to embrace the subject matter of the claim under examination is not in itself sufficient to deprive that claim of novelty.
7. And this is still the case even when D1 enables the full range it claims.
I agree MM, you can make a worthless Strap and slap it on the already made product, but you can’t slap it on and claim it is a whole new Product.
“A new utility can not render an anticipated composition patentable.”
This is tautological, as anything that is anticipated is not patentable.
Oh, good grief. Try this: a new utility can not render a composition patentable, where that composition was previously known and used.
I haven’t thought about it enough to say this with any confidence, but it is my belief that this also applies to composition claims.
I’ve thought about it a lot and have 100% confidence that, with respect to compositions, you are certainly wrong. You can’t patent an old composition simply because you found a new use for it. That’s what method claims are for.
MM–
“A new utility can not render an anticipated composition patentable.”
This is tautological, as anything that is anticipated is not patentable.
Concerning process claims in particular, it is my belief, as stated in my long post, that a claim asserting within a subrange a different utility than the prior art claim asserts for the entire range disclosed in the prior art, which subrange utility is not necessarily achieved by the prior art claim over its entire claimed range, will not be anticipated.
I haven’t thought about it enough to say this with any confidence, but it is my belief that this also applies to composition claims.
Amendment: in 4th last paragraph, capitalized “WITHIN THAT RANGE” should instead read “WITHIN THAT SUBRANGE”
“”Showing criticality, however, is a rebuttal to a 103 rejection and has nothing to do with section 102″
Except it does (look up enablement).
Sorry.”
+1
Mark, it’s all about what is disclosed in the prior art; see my long post below.
Mark–
I believe that utility is most certainly involved with inherency in 102. Go back to Napier and Grasselli (for a discussion of inherency in 103).
Napier is a case that was wrongly decided, about which I will write more tomorrow.
Check out my post below.
I’ve come to this discussion late, and see that an earlier post of mine didn’t make it…re-post:
Ned–
Take all this with a grain of salt, it is only my understanding…
Consider first the patentability of a process claim.
The prior art discloses a range, and discloses how to use that process to achieve a particular outcome, which outcome is achievable throughout the entire range disclosed.
However, other outcomes may be achieved by using that process over some range other than the range specifically disclosed in the prior art claim.
You use the term “subrange”, which I will take to mean a range completely within the range disclosed in the prior art. In order for a new claim to be anticipated by a prior art reference, that reference must disclose both how to make, and how to use, “the invention”. In this hypothetical example, the prior art teaches how to use the process over the entire range disclosed, and only how to use the process over the entire range disclosed, because the asserted utility can be achieved by using the process at any point within the disclosed range.
Thus, a new claim asserting the same utility as the prior art claim within a subrange will be anticipated.
Take now the case where there is another utility that is achieved by the use of the process over the entire disclosed range, that is necessarily achieved any time the process is used within that range–the achievement of that utility can be said to be inherent in the process, and does not need to be expressly disclosed in order to enable anticipation. The utility WILL NECESSARILY BE ACHIEVED if the process is used anywhere within the disclosed range, and is thus inherent in the prior art disclosure.
Thus, a new claim asserting a different utility than the prior art claim within a subrange, but which utility is necessarily achieved by the prior art claim over its entire claimed range, will be anticipated.
Take now the case where there is another utility that is achieved by the use of the process over only part of the disclosed range…that utility is NOT NECESSARILY ACHIEVED if the process is used anywhere within the disclosed range–hence it is “critical” to use the process WITHIN THAT RANGE” to achieve the particular utility. Since it is use of the process over the entire range that is disclosed with reference to a specific utility in the prior art, that prior art does not disclose use of the process over the subrange with respect to a different utility, either expressly or inherently.
The question isn’t whether the property is inherent, but whether such inherency is evidenced in the disclosure of the prior art.
Thus, a claim asserting a different utility than the prior art claim within a subrange, which utility is not necessarily achieved by the prior art claim over its entire claimed range, will not be anticipated.
More later on articles, compositions, and the use of the principle of “inherency” in 103 analysis. As a primer, use of inherency in 103 was done first by an examiner, was endorsed by the BPAI, and accepted as legitimate by the CAFC; something found inherent in a process claim has been used to invalidate a composition claim; and Napier was wrongly decided.
If you “create” a DNA molecule that is legally in the public domain
You’re putting the cart before the horse. Who decides when a novel chemical composition that has never been described before and indisputably does NOT exist in nature in the form in which it is expressly claimed is “legally in the public domain”?
Your dispute with me is that you do not agree that the specific jellyfish DNA is in the public domain where the jellyfish itself is in the public domain.
Why do you assume that the jellyfish was “in the public domain”, Ned? For all anyone knows, the jellyfish could have evolved after I filed my patent application. It could have been created by some magical invisible being with awesome powers who decided to mess with me after my application was published. Sounds crazy, but it’s perfectly consistent with what roughly 30% of Americans believe about our universe.
Beliefs?
Look, I somewhat disagree with 7th circuit opinion. However, it embraces very old Supreme Court case law.
If you "create" a DNA molecule that is legally in the public domain, it makes no difference that others did not know of it. I personally disagree with this, as I think the essence of prior art is public knowledge. There are Supreme Court cases that have even held that once knowledge of an invention is lost, it can be "reinvented."
There are also Supreme Court cases that authorized patents on a process and the chemical it produced where the chemical is produced by known prior art processes, but nobody recognized that it was produced. Tilgman v. Proctor. This would also suggest that the golf ball case might be wrong.
Regardless, one cannot patent things that are in the public domain regardless that one does not know of them. If a non informing public use places the claimed DNA into the public domain, the DNA cannot be patented.
Your dispute with me is that you do not agree that the specific jellyfish DNA is in the public domain where the jellyfish itself is in the public domain.
As to policy, I disagree with it, to a degree.
Yes it does. It holds that a non informing public use is prior art.
Moving the goalpost, citing shxtty 7th circuit cases from 1975 that have absolutely nothing to do with the synthesis of novel chemicals, and floating bizarre interpretations of legislation will not help you.
Read what you wrote:
identically disclosed in the prior art jellyfish
Get off the drugs, Ned. Assume the facts in my hypo, not yours, and answer my questions. Do you have a policy-based reason for your beliefs? Because your legal reasons sxck the [deleted] out of my dead [deleted]’s tightly puckered [deleted].
I’m not going to read the “golf ball case” Ned. It has nothing to do with my hypothetical.
MM, assuming the Aussie jellyfish is prior art (e.g., after September when Aussie jellyfish become prior art) your 999 necleotide is anticipated if identically disclosed in the prior art jellyfish per Dunlop. It makes no difference that you thought you were the first. You were not the first to make the sequence.
If there is a difference in sequence, the question becomes obviousness.
Now, if I am wrong that a non informing public use is not prior art, please explain. I think the issue is important outside of chemistry.
Malcolm, I’ll address the hypo next. Here is a link to the golf ball case.
Dunlop Holdings Limited, Plaintiff-appellant, v. Ram Golf Corporation, 524 F.2d 33 (7th Cir. 1975)
link to law.justia.com
Ned But I take it that you do not have any problem with the general principle that if a chemical composition is known, then one cannot reclaim the chemical composition just because one discovers a new use for it.
Agreed. But the chemical composition (my 999 nucleotide gene) was not known until I synthesized it and showed its utility to the world. Please address the facts in the hypo, Ned, and answer the questions I asked you. Thanks.
Well, Malcolm, until September, perhaps you could argue that that jellyfish located in the sea off Australia was not a prior art jellyfish, it being in public use outside the United States.
But I take it that you do not have any problem with the general principle that if a chemical composition is known, then one cannot reclaim the chemical composition just because one discovers a new use for it. Furthermore, I would think that your agreement will extend to known variations the prior art, such isolated versions.
The only real dispute we have is whether a particular strand of DNA, found in a human, is in the prior art. (I suggest to you that the exclusion from patentability of things of nature is based upon fundamental principle that things of nature are in the prior art.)
However consider this: We know that a trade secret is not prior art. However it is also said that if a physical embodiment of the prior art, such as a golf ball made from a material that is unknown, and otherwise unknowable except by prohibitively expensive reverse engineering, is available to the public, the material of the golf ball is in the public domain and is prior art, not from the date the nature material is discovered or reverse engineered, but from the date that the golf ball first entered the public domain. (I have significant difficulties with the golf ball case, but nevertheless it is respected precedent.)
So if a sequence of DNA exists in nature and can be reverse engineered from nature, it would seem that the golf ball case would suggest that the DNA is in the prior art. It is old, even though it has yet to be reverse engineered.
I also believe the existence of DNA in the prior art inherently discloses/makes obvious isolated versions of that DNA.
So let’s say I synthesize a novel 999 nucleotide DNA sequence that encodes a novel 333 amino acid enzyme that just happens to be extremely useful for treating leukemia. Three years after I file my patent application somebody discovers that a jellyfish off the coast of Antarctica contains the same nucleotide sequence (part of a larger jellyfish gene encoding a protein of unknown function expressed in the jellyfish’s tentacles). You’re saying you believe my gene is obvious? Why? What if my gene differs by one nucleotide from the jellyfish sequence. Still obvious?
Maybe you have a policy-based reason for your “beliefs” on this subject, Ned. If so, please share them. Also, I have no idea what your beliefs on this subject have to do with the subject of this thread but whatever.
IANAE, regarding 80, 90 and the claimed 85, this is a close question as to 102/103. However, on further consideration, I agree that the issue is obviousness.
sockie Trick question, as the Crticialness may evoke a genus/species error and show that anticipation was in fact not reached (enabled) by the prior reference, even though a wider range was divulged.
That’s actually a “trick answer” to IANAE’s rhetorical question. A new utility can not render an anticipated composition patentable. You can get a new method claim, though.
Man, this blog has the dumbest trolls.
sockie: Unless of course the genus is wrong and the original suffers from overbroadness or noneneblement, which brings us back to square one.
Let me spell it out for you, sockie: A species (by definition, a member of a genus) anticipates a claim to the genus because if the genus claim were granted, the species would necessarily infringe the genus claim. The fact that the genus may be “overbroad” or “non-enabled” is utterly irrelevant to this (correct and boring) analysis.
Mark, thanks. I read the MPEP. link to uspto.gov
It seems:
If the prior art has examples in the claimed range, it anticipates. We agree on this.
If the prior art has examples above and below the claimed range with sufficient disclosure to suggest that the claimed range, bracketed by the examples, is disclosed, it anticipates. (Sufficient specificity.)
If the prior art has examples outside the claimed range, but in a pattern that suggests the claimed range is withing the enabled disclosure, the claimed range is not anticipated, but nevertheless, obviousness.
I think here, in this case, we had prior art examples near the upper limit claimed plus an enabling disclosure that the embodiments in the claimed range would work. This seems enough to render the claim obvious, but not anticipated.
I stand corrected.
Assume in this example that the prior art discloses examples of 80, 90, and 100, and you claim 85. You disclose no different utility than the prior art. I suggest to you that your claim is anticipated.
That’s clearly ridiculous. A claim to 85 cannot be anticipated unless the prior art teaches 85. If the prior art teaches 80 and 90, then 85 is (probably) obvious.
The bucket’s handle add’s a new utility.
Yes, but the bucket still has the utility taught by the prior art. And the claim is to the structure, not the use. The structure is either taught and enabled, or not. Adding utility doesn’t change whether the structure is found in the prior art.
The racemate of both L-and R- inherently discloses the the L- and R-enantiomers.
I would tend to agree, assuming the stereochemistry of the molecule is known. The court appears not to agree.
“Showing criticality, however, is a rebuttal to a 103 rejection and has nothing to do with section 102”
Except it does (look up enablement).
Sorry.
“How can a new utility save a claim to a compound that is anticipated? ”
Trick question, as the Crticialness may evoke a genus/species error and show that anticipation was in fact not reached (enabled) by the prior reference, even though a wider range was divulged.
This is sort of like science fiction. If I write a scince fiction novel covering a range of materials from nothing to everything, but do not enable that entire range, a later actual invention within my larger range will not be anticipated by the (bogus for that purpose) previously shared larger range.
Unless of course the genus is wrong and the original suffers from overbroadness or noneneblement, which brings us back to square one.
One cannot assume that the proffered genus is always correct. If the genus is not correct, any sense of species infringing the genus is shot.
Unless of course the genus is wrong and the original suffers from overbroadness or noneneblement, which brings us back to square one.
One cannot assume that the proffered genus is always correct. If the genus is not correct, any sense of “inherency” is shot.
the genus inherently discloses every species for the disclosed utility.
I can see that being arguable when a well-defined discrete genus is described in a specification. If it says that all thiols have a particular utility, then by all means reject a claim to a particular thiol for that utility as anticipated. The disclosure of the genus is tantamount to a list of all its member species. However, if only one or two are disclosed and the entire genus is claimed, I don’t think it’s as clear-cut that all species are inherently disclosed.
Also, here we’re dealing with a continuous genus, which describes not an identifiable set of compounds but a range of concentrations, and the range clearly reaches way beyond what is demonstrated to have utility. The narrower range claimed in the later patent has never been practiced before, and no teaching within that range can be found in the prior art. What if the prior art had said “regardless of alkalinity”? Would that anticipate any conceivable alkalinity range in a later patent?
unless the claim also claims a new utility.
How can a new utility save a claim to a compound that is anticipated? Once you accept that as a rule, you might as well disclose a new utility and copy the claims of a prior art patent. Are you starting to see why this has to be an obviousness issue?
I would urge anyone discussing the issues at play here to make clear at least whether they are discussing composition or method claims, as I did in my 2:06 comment upthread.
As for this:
Ned Heller said in reply to Mark…
Mark, can you explain why a species anticipates a genus?
IANAE said in reply to Ned Heller…
I would think a species anticipates a genus claim because a species infringes a genus claim.
IANAE has provided the correct answer.
IANAE, regarding the prior art, it also has to enable. Thus the question is whether the broad disclosure of a genus enables the species not among the examples. I think this is what you meant by "valid." Whether the patent is claiming the same invention might be relevant to an interference or derivation proceeding.
Thus, regardless of the "claim" in the prior art, when the prior art discloses specific examples, the question then becomes whether the prior art inherently discloses the claimed range or subrange.
Assume in this example that the prior art discloses examples of 80, 90, and 100, and you claim 85. You disclose no different utility than the prior art. I suggest to you that your claim is anticipated.
The bucket's handle add's a new utility.
The racemate of both L-and R- inherently discloses the the L- and R-enantiomers. (I am not a chemist, so bear with me here if I get the lingo wrong). A patent could be hand on the isolation process.
I also believe the existence of DNA in the prior art inherently discloses/makes obvious isolated versions of that DNA.
Ned- “utility” has absolutely nothing to do with this. Bottom line-this was a 103 issue, definitely not 102. This is based on case law dating back probably 40-50 years (at least). See the MPEP for further details.
Read IBP’s posts above. I think he has it right. As you noted, the genus inherently discloses every species for the disclosed utility. A claim to subrange that does not also require a new kind of utility would necessarily make practice of the prior art an infringement.
Thus the law should be, and I think is, that if there is any overlapping ranges at all, the claim is anticipated unless the claim also claims a new utility.
One simply cannot and should not make the practice of the prior art an infringement.
It depends on what you mean by “the practice of the prior art”. When the prior art expressly teaches only 80, 90, 100 and 150, and claims “less than 150”, are you practicing the prior art at 50? Does that depend on whether the claim to “less than 150” is valid?
What if the prior art discloses and claims a bucket generally, and you have a claim to a bucket with a handle? Is a bucket with a handle practicing the prior art?
What if the prior art is a racemate of a known molecule, and you claim the L enantiomer?
There’s no law against the same article or method simultaneously infringing the claims of two valid patents.
IANAE, IBP pointed the way. The patentability of a subrange depends on whether claim also requires a new use (utility). Thus if someone is practicing the prior art "use" and not the new use, albeit that he is within the subrange, he is not an infringer.
One simply cannot and should not make the practice of the prior art an infringement.
Malcolm, I think you said this once yourself.
“If it were limited to a specific use different from the prior art, then we get to inherency/obviousness.”
Correct. We should consider any intended use limitations in this case just like every other intended use limitation that there ever has been has been considered.
The person practicing the prior art can be made an infringer of the patent on the narrower range.
So what? That’s the case for all selection patents (regardless of unexpected results or other secondary considerations), all overlapping range patents, all patents claiming a range of a known property for which no range was previously disclosed, and all improvement patents of any kind. Doesn’t make them invalid.
Unless the person practicing the prior art is automatically or inherently an infringer, it’s not an anticipation.
IANAE, I don't buy this explanation at all.
The person practicing the prior art can be made an infringer of the patent on the narrower range.
Ned, I believe that a species anticipates a genus because a genus is generally understood to recite each species in the alternative. Therefore, the express disclosure of one species that falls within the genus anticipates.
I would think a species anticipates a genus claim because a species infringes a genus claim.
A broad range doesn’t anticipate a narrow range, assuming no embodiment within the narrow range is not explicitly taught, because an embodiment within the broad range is not inherently within the narrow range. I would think it should always be an obviousness issue when a claimed range overlaps with, but does not fully encompass, a prior art range.
Mark, can you explain why a species anticipates a genus?
I think this case was plainly wrongly decided. In prosecution, the burden is on the PTO to show invalidity under 102. That is, the examiner has the burden of showing that each and every element of the claim is disclosed by the reference. This decision holds that when a genus is disclosed, the burden is on applicants to show that there is something different or “critical” about a claim to a subgenus. This means that every genus disclosure anticipates everything that falls within it, absent a showing of criticality. Showing criticality, however, is a rebuttal to a 103 rejection and has nothing to do with section 102. Under this decision, Applicants would have to produce rebuttal evidence of “criticality” or “unexpected results” to respond to anticipation rejections. This is important in prosecution because it would shift the burden of proof in a 102 rejection from the examiner to applicants. Citing this decision, an examiner could assert that a broad genus disclosure anticipates everything that falls within it, absent proof of “unexpected results” or “criticality” to the contrary.
Good enough, LE, let’s move on to other matters.
6, IBP did bring up a point we must consider. If the specific use/application of the subrange is different from the use of the broader range…. I suppose if the claim were not in some way limited to that use, then there would be anticipation. If it were limited to a specific use different from the prior art, then we get to inherency/obviousness.
“6, because of its use of sweeping language far beyond the facts of the case, you think that Rader may have been behind Lourie’s poorly written opinion? I would tend to agree, given everything I’ve ever seen from Rader.”
Not really that, I could just hear it in the words, if you’ve ever heard/read Rader and Lourie talk/write it was as if you were hearing Rader talk/write there, not Lourie.
But in so far as you bring that up, yes, very much the overbreadth as well. You see Rader doing that all the time. He <3's his bright line rules that cover whole swaths of subject matter and he <3's making them. Lourie is not quite so taken with doing that either.
"Now this is simply brilliant, I must congratulate you 6, as I fully agree,"
I certainly appreciate it, and it's funny because every attorney whom I discuss that specific principle with over the phone agrees as well, although they're fully aware of Atofina and <3 citing it for their client. They're well aware that a reasonable fact finder could find every last data point in a given range and unless it is a huge range with absurdly not enabled values within it they know it should be anticipatory if not for court meddling.
I think we arrived at the same point by different paths, as I agree with the decision, but this still allows a 102 issue to be present (and does not dissolve to a 103 issue).
As Dennis notes: “On appeal the Federal Circuit reversed based upon the appellate court’s own factual finding that a single prior art reference teaches and enables each element of the asserted patent claim.” Clearly if a subrange (or any of the three pedantic verisons) contain a subrange that is not so enabled (be it for criticality or specialness), then 102 could fail.
That’s the point of my post. The other legal ramifications you throw in are not incorrect, per se, but they do not address the point of my post. I used the term “muddy” more to indicate that we were talking past each other.
IBP, I see your point about utility. I think this is not the same thing as criticality, or is it? If a claimed subrange has the same utility as the prior art, but does it better, is not that patentable as well?
But if the new subrange is used for something different than what the prior art discloses, I agree, there can be no anticipation.