Anticipation II

Patent Law

Sept. 16, 2004

Novelty § 102

A person is not entitled to a patentif the invention was:

• in the prior art (as defined by § 102 (a), (e), (g))

In re Hafner

Klaus Hafner, Univ of Darmstadt, GDR

In re Hafner

German Apps filed

1959 Aug. 1960

1st US App filed

July, 1964

Expanded US App filed

35 USC Sec. 120

• US Implementation of international “Paris Convention” for patent priority (1890) (www.wipo.org)

• Preserves US priority based on foreign priority filing

• “National Treatment” principle

In re Hafner

German Apps filed

1959Aug. 1960

1st US App filed

July, 1964

Expanded US App filed

Inter-vening Ref 1

Intervening Ref 2

Hafner, cont’d

• What is Hafner’s argument?

– What is “inconsistent and unfair”?

• What is Judge Rich’s holding?

Hafner, cont’d

• What is Hafner’s argument?

– What is “inconsistent and unfair”?

• What is Judge Rich’s holding?

– TOO BAD!

Hafner: Structure vs. Use

1959/1960 Structure Disclosure

Use Disclosure

US Pat Application

1964 C-I-P

I have found this chemical useful for treating cancer . . .

In re Hafner

German Apps filed

1959 Aug. 1960

1st US App filed

July, 1964

Expanded US App filed

US Pat Application

1964 C-I-P

I have found this chemical useful for treating cancer . . .

+

What is Judge Rich’s Attitude About this result?

• See p. 381

• Is he right?

– Unfair?– Product (Structure) Claim . . .

Titanium Metals

Titanium Metals

Claim 1:

A titanium base alloy consisting essentially by weight of about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to 0.2% maximum iron, balance titanium, said alloy being characterized by good corrosion resistance in hot brine environments.

Hot Brine Thickener

Hot Brine Clarifier

Titanium Metals

• What prior art was cited?

• Why did the examiner say it anticipated?

• Did the Russian article disclose all or many of the alloys claimed by Covington and Palmer?

• How many alloys claimed, how many disclosed in Russian article?

• Why should this anticipate?

Titanium Metals

One Point on this graph destroys patent-ability!

Genus claimed by Titanium

Metals

Embodiments enabled and described in Russian publication

X 1 point on 1 graph in article; meets range limitations of claim

Corrosion Resistance Property

• What is Titanium Metals’ argument?

• What does Judge Rich say?

Corrosion Resistance Property

• What is Titanium Metals’ argument?

• What does Judge Rich say?

WHAT DO THE CLAIMS COVER?

Claim 1:

A titanium base alloy consisting essentially by weight of about 0.6% to 0.9% nickel, 0.2% to 0.4% molybdenum, up to 0.2% maximum iron, balance titanium, said alloy being characterized by good corrosion resistance in hot brine environments.

Irrelevant?