The word 'patent' is from Latin 'to disclose'. The US Patent system, as
established by Thomas Jefferson over 200 years ago, granted patents to new
and useful inventions and discoveries in exchange for public disclosure via patent.
A U.S. Patent is a contract between the applicant and the Federal Government:
in exchange for disclosure via the patent a monopoly, limited to 17 years for
manufacture, use, sales and importation into the U.S. is granted.
Applications filed since November 29th 2000 have been published,
unless filed with a Request for Non-Publication, and comprise 'prior art'
citable during examination in support of statutory grounds of rejection
defined in the United States Code (USC) Title 35, Patents:
35 USC §101: patentable subject matter;
35 USC §102: anticipation by a single prior art reference;
35 USC §103: 'obviousness' in view of combined references;
35 USC §112: written description: enablement; indefinite claim language.
In modern, computer, 'first in last out', reverse order:
§112 comprises grounds for rejection of indefinite claims and for specifications
failing to "enable any person skilled in the art to which (the claimed invention) pertains
... to make and use the same". 'Enablement' also requires a demonstration that
the applicant was in possession of the invention at the time of filing.
§103 states that "A patent may not be obtained though the invention
is not identically disclosed or described as set forth in section 102 of this title,
if the differences between the (invention) and the prior art ... 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 Judge Markey the Court of Appeals for the Federal Circuit,
replacing the U.S. Court of Customs and Patent Appeals (CCPA) in 1982;
defined the metes and bounds of §103 as grounds for rejection: the references
cited must possess all the 'claimed limitations', the 'suggestion' for the combination
must be in the prior art, not the invention, and most of all the combination can
not violate the 'principles of operation' of an invention of a cited reference.
§102 rejections: apparently in an attempt to avoid this body of case law;
enjoyed a resurgence in recent years if often confused with §103 especially by
newer examiners as "(a)dditional references may be used to interpret the allegedly
anticipating reference (to) shed light on what it would have meant to those
skilled in the art at the time" (Robert L. Harmon, Patents and
the Federal Circuit, BNA Books, 6th Ed. 2005, p. 98).
But while In re Spada permits 'filling the gaps' between the knowledge
of one 'practiced in the art' and that of the judges: if the allegedly anticipating
reference is silent on 'inherent characteristics'; by using a second reference to see if
the reference relied on as anticipating actually had possession of the invention in
question, the second reference can not "supply a missing claim limitation."
(Ibid., p. 99, citing Teleflex Inc. v. Ficosa North Am. Corp.)
§101 also enjoyed a resurgence in response to the triumph of
computers generally and the Internet particularly with hardware first being
recognized as patentable subject matter followed by software with a culmination in
State St. Bank (1998) which ended a prohibition against business methods,
as long as judgmental human reactions are excluded, and recognized
the use of algorithms by digital machines as legitimate means.
The accommodation of business methods as patentable subject
matter in this new technological context of the Internet has taken over
a decade with Bilski (2010) relying heavily on KSR (2007) finally setting
forth guidelines for patentability adopted by the US Patent Office reflecting
the physical requirements of the 199os: proper definition of the 'means'
claim language sanctioned by statute: "An element in a claim for
a combination may be expressed as a means or step for
performing a specified function" (35 USC §112).
Confusion between §§112 & 101 as proper grounds
for rejection reflected resistance to allowing 'common
sense ideas' simply given this new Internet context while the
root problem: no pertinent prior art; was addressed by publication
of Applications to build prior art needed for this new class of invention.
Classification reflects a fundamental aspect of the US Patent system
as the purpose of an invention determines its classification and
well known elements in one field providing new utility
in another comprise a legitimate basis for patent.
In the words of Robert L. Harmon "The real
question is whether the newly discovered utility
would have been obvious. Obviousness requires some
relationship between the use taught by the prior art and the
use discovered". (Ibid., p. 60, citing In re Dillon, 1989)
But what is meant by 'some relationship'?
The relation required is provided by the classification
system but the Office in publishing applications and requiring
inclusion of these along with foreign patents and 'non-patent literature'
in the 'pre-examination search' since 26 August 2006 for requesting
accelerated examination under nearly all grounds torpedoed the
only means available for ameliorating increasing backlogs
for examination with only 2,500 applications filed with
requests the same in the following three years.
Examination backlogs have increased beyond
precedent while full Applications are still prepared without
conduct of a search in order to file before 'the trade show this weekend'
ostensibly to preserve foreign filing rights otherwise lost by public disclosure
despite the fact that Provisional Applications were created over 15 years ago
under the Paris Convention on June 8th, 1995 for precisely this purpose.
Published Applications have proved a double edged sword for the Office.
First thought a boon in providing more prior art supporting rejection
under §103 the avalanche of new prior art created made proper
examination untenable for its understaffed examining corps.
The Office asked 'experienced practitioners' to apply for
examining 'vacancies' in 2009 and over 4,000 did but during
fiscal 2010 only four (4) examiners were hired while 127 left the corps
as Congress had appropriated no money leaving Accelerated Examination
as the only tool in the box capable of addressing the situation with a
return, essentially, to the basics to meet the future with the onus
of proving an invention patentable upon the Applicant.
