Intellectual Property

Boston College Law School

February 18, 2009

Patent – Nonobviousness

Requirements

• (1) Patentable Subject Matter

• (2) Novelty

• (3) Utility

• (4) Nonobviousness

• (5) Enablement

Nonobviousness

• 35 U.S.C. § 103. Conditions for patentability; non-obvious subject matter.– “A patent may not be obtained though the invention is

not identically disclosed or described as set forth in section 102 … 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 …”

Nonobviousness

• Factors in the analysis– (1) Scope and content of prior art– (2) Differences between invention and prior art– (3) Level of ordinary skill in the art– (4) “Secondary considerations”

• Commercial success

• Long-felt but unsolved needs

• Failure of others to invent

• Copying by others

KSR v. Teleflex

In re Dembiczak

Problem 3-10

• Claimed invention– Lollipop in shape of human thumb

– Wrapped in a mold that can be worn

– Contains gum inside lollipop

• Prior art references– Siciliano: ice cream wrapped in a

removable mold

– Copeman: lollipops in various molds usable as balloons

– Harris: hollow, thumb-shaped lollipop

– Webster: chewing gum enclosing liquid syrup

Nonobviousness

• Secondary considerations– Commercial success– Long-felt but unsolved needs– Failure of others to invent– Copying by others

Requirements

• (1) Patentable Subject Matter

• (2) Novelty

• (3) Utility

• (4) Nonobviousness

• (5) Enablement

Enablement

• 35 U.S.C. § 112. Enablement– “The specification shall contain a written description

of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Approval Process

• File application w/ PTO

• Review by PTO for patentability

• Back and forth between applicant and PTO

• Publication of some patent applications

• Issuance or rejection of patent

• Appeal to review board, CAFC

• Reexamination procedure

Sample Patent

Edison

• Sawyer & Man claim– (1) An incandescing conductor for an electric lamp, of

carbonized fibrous or textile material …

Enablement

• 35 U.S.C. § 112. Enablement– “The specification shall contain a written description

of the invention and of the manner and process of making and using it, in such full, clear, concise and exact terms, as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

Gentry Gallery v. Berkline

• A sectional sofa comprising: …– a pair of reclining seats disposed in parallel …– a fixed console disposed in the double reclining seat section between

the pair of reclining seats …– and a pair of control means, one for each reclining seat; mounted on

the double reclining seat sofa section

Berkline Sofa

Administrative

• Next Assignment– Read IV.C.1 and 2– Into IV.C.3 – Doctrine of Equivalents

• Through Festo