Law School Up Close

Tackling Title 35 - Part 4: 103 and 112

 In this fourth installment of Tackling Title 35, we are going to go over Title 35 USC 103 and 112. The first of the two sections discusses obviousness, which is a fairly simple and straightforward section as far as the patent bar is concerned. Essentially, patents are not meant to be given for inventions that are seen as "imminent" at the time of their filing. An invention is not patentable if it is an obvious innovation to an existing patent, that a person "of ordinary skill" would conceive. Section 112 discusses claim drafting, and was definitely my favorite topic of the PLI course thus far. Claim drafting is the heart of patent prosecution, and understanding the ins and outs is not only beneficial for passing the Patent Bar, it is also paramount to succeeding in the field, and getting quality patents for your clients, so that they can actually use them.

So without further ado, let's break down these sections in a little more detail.

Title 35 USC 103 - Conditions for patentability; non-obvious subject matter

  • A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the pertains. Patentability shall not be negated by the manner in which the invention was made.

When you look at the length of discussion regarding this section of the title, the relatively scant coverage may indicate that it is rarely used for the rejection of patents. This is actually a very divisive point of conversation. A case that took place in 2007, KSR Int'l Co. v. Teleflex caused a commotion in the field when the supreme court ruled in favor of KSR, who was getting sued by Teleflex for patent infringement. What they basically said is "hey patent office you are being to robotic in how you treat these kinds of cases, we basically went against the many precedents that you have set because we feel that this area of the law needs review". Many at the patent office believe that KSR did not change the way that obviousness is examined, but just gave a landmark to point to in rejecting applications. Indeed, the USPTO board of appeals sites KSR in approximately 60% of its decisions relating to obviousness.

From KSR sprung the 7 Rationales of KSR, which is kind of a refinement of the 3 guidelines that were developed as a result of the Graham v. John Deere. This is the USPTO's summarization of the rationales:

  • (A) Combining prior art elements according to known methods to yield predictable results;
  • (B) Simple substitution of one known element for another to obtain predictable results;
  • (C) Use of known technique to improve similar devices (methods, or products) in the same way;
  • (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
  • (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
  • (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
  • (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.

The last point, (G) is what is carried over verbatim from the Graham analysis, but one could say that this is the way that the rules have always been prosecuted. TSM (Teaching/Suggestion/Motivation) was the guideline that KSR has really turned upside down. The TSM test is a three part test that is meant to objectively determine whether the prior art for a given invention could be simply combined in order to create the invention. It mandated that all aspects of the invention be in the prior art, and this is where the Supreme Court felt that there was considerable leniency in the law. One could add something to an invention just to be unique, even if it served no real purpose to the invention.

I would strongly suggest reading this article by IP Watchdog if you would like a little more context as to how KSR differs from TSM in determining a prima facie rejection based on 103.

Title 35 USC 112 - Conditions for patentability; non-obvious subject matter

  1. (a) IN GENERAL.—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 or joint inventor of carrying out the invention.
  2. (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
  3. (c) FORM.—A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
  4. (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
  5. (e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
  6. (f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

As I noted earlier, claim drafting was the first thing in my studies for the USPTO Registration Exam that really got me hyped up on the idea that I will soon be doing this (hopefully). Claim drafting is really not as simple as proclaiming "my client deserves a patent for his wonderful invention, and this why...", no if the Patent Office had to read applications submitted by over-caffeinated Liberal Art students who cranked it out the night before sending it, then there would be millions more patents in the backlog. The rules for claim drafting were set out to create a uniformity to claims, so that they could be analyzed more efficiently.

The first rule is that the claims are always kicked off with the term "I claim", "We claim", or "What is claimed is". This is followed by a bulleted list of claims, who cannot exceed the length of one sentence. This is a weird rule I know, but it forces one to write claims that are formulaic. It is not intended to be easily understood by your mom or next-door neighbor.

The general rule in claim drafting is that you want to start broad and then narrow your claims like a funnel. Broader claims are seen as advantageous to the inventor, because it gives them more protection in their work, and can lead to them making more money from their inventions. At the same time, you write progressively narrower claims that evolve from your general claims in order to guarantee that at least some of them get through. The broadest claims are what are known as "generic claims", and include all possible variations of an invention. One level below generic claims are "species claims", which are generic claims with a single limitation. Think "a roller skate with four wheels", the single limitations is the italicized portion, and this puts the claim into the species of roller skates that have four wheels. Once another limitation is added it becomes sub-species claim, and the tree continues downward.

That is where I will wrap up this installment of Title 35, in the final part 4 of the series, I will wrap up 112 by discussing types of claims, and then I will go over a couple of other sections of note from the title that the law of patents "turns on". I hope you found this article, and as always, feel free to reach out with any questions or suggestion on how to improve the material!


Ted Rand