z******n
发帖数: 336 | 1 In 2006, inventor got a Patent claiming X
In April 2008, inventor published an article disclosing X+Y
In October 2008, inventor filed an Application claiming X+Y
The only difference between Patent and Application is Y.
To make ODP rejection, the Examiner needs to show that difference Y is an
obvious modification.
What can he rely on to do so?
Questions:
Can he rely on Inventor’s own April 2008 article within one year of the
filing to support that Y is obvious? (My instinct is not)
What if the article is published one year before the filing?
What if the article is published on or after filing?
Other question:
Can Examiner rely on other’s articles? If so, anytime or only those before/
on/after October 2008? | D******D
发帖数: 1022 | 2 Can he rely on Inventor’s own April 2008 article within one year of the
filing to support that Y is obvious?
yes he can, you are confusing ODP with 102(b)
Can Examiner rely on other’s articles? If so, anytime or only those before/
on/after October 2008?
yes before October 2008 | z******n
发帖数: 336 | 3 Well, I am not confused with 102(b). It is exactly why I am asking about
this.
The answer I have now is the Examiner cannot, but I am not 100% sure.
Essentially, what I am asking is:
Can the Examiner use a non-prior art article as the secondary reference to
fill the gap between X and X+Y.
1. ODP is still talking about Obviousness. The examiner still needs to
establish a prima facie case of obviousness with prior art which does not
include the inventor's own academia article within one year.
2.Or to understand it in this more complicated way:
a. Obviousness means being obvious in the eyes of a skilled artisan.
b. For a skilled artisan to determine if something is obvious or not, he
needs to rely on prior knowledge.
c. A skilled artisan does not know the Article in a legal sense
d. A skilled cannot conclude obviousness without knowing the Article
3.From a fairness point, if the Examiner can rely on inventor's own academia
article to make a proper ODP, an inventor should not publish any unobviou/
siginificant improvement results before filing patent application. But I
think it is not the case in real life, so that is my instinct the Examiner
cannot.
4.(1) as stated in MPEP 804 (II)(B)(1) odp and 103(a) analysis is the same,
(2) the April 2008 article is not cited as prior art, (3) therefore the odp
rejection is in view of the 2006 patent alone, (4) but the 2006 patent, does
not teach all elements, (5) therefore prima facie case for obviousness not
established, (6) hence odp improper.
before/
【在 D******D 的大作中提到】
: Can he rely on Inventor’s own April 2008 article within one year of the
: filing to support that Y is obvious?
: yes he can, you are confusing ODP with 102(b)
: Can Examiner rely on other’s articles? If so, anytime or only those before/
: on/after October 2008?
: yes before October 2008
| B*****t
发帖数: 3012 | 4 disclaimer:偶不對偶的發言承擔任何法律責任...
我認為美國專利法102和103對prior art的判斷標準是一樣的
所以你說的應該沒問題......
【在 z******n 的大作中提到】
: Well, I am not confused with 102(b). It is exactly why I am asking about
: this.
: The answer I have now is the Examiner cannot, but I am not 100% sure.
: Essentially, what I am asking is:
: Can the Examiner use a non-prior art article as the secondary reference to
: fill the gap between X and X+Y.
: 1. ODP is still talking about Obviousness. The examiner still needs to
: establish a prima facie case of obviousness with prior art which does not
: include the inventor's own academia article within one year.
: 2.Or to understand it in this more complicated way:
| z******n
发帖数: 336 | 5 Thank you for the input. I am not talking about 103 but ODTP. However, let
me supplement what you said to make the answer complete.
我認為美國專利法102,103 and OTDP 對prior art的判斷標準是一樣的, 都是要符合
102才行
这是我刚google到的
Critical dates for prior art in OTDP defense are governed by § 102
http://depatentlaw.morrisjames.com/uploads/file/08%20335%20587.
【在 B*****t 的大作中提到】
: disclaimer:偶不對偶的發言承擔任何法律責任...
: 我認為美國專利法102和103對prior art的判斷標準是一樣的
: 所以你說的應該沒問題......
| f*****n
发帖数: 12752 | 6 quite weird objection. I thought a strong 103 rejection would have been
given instead of ( or at least together with) the dp rejection. But seems
that the dp rejection also focused on the obviousness, anyway. I agree
with DANIELSD on the prior art citation and anything (including any
publications with the same authorship) before the earliest filing date (e.g., Oct 2008 if no priority claimed) could be cited and/or
combined with the first patent for the rejection of the second application. For LZ's point 3, I think that is the
realty and it is fair that nobody should publish anything before filing an
applicatin without the understanding that anything published is publically
owned.
By the way, in realty many examiners mention common knowledge for their
responsibility to prove the prima facie case of obviousness. I think it is
fair for the applicant to educate the examiner by citing concreate examples/
arguments to traverse, unless the examiner really misunderstood the simple
common knowledge.
Just my 2 cents | z******n
发帖数: 336 | 7 It is quite common these days.
In 103 and OTDP, we often see "unpatentable over A in view of B"
For 103
A must be any 102 pior art
B must be any 102 prior art
For OTDP
A is a Patent or pat application with one common inventor, assignee or
research agreement. This is the difference: A is not a 102 prior art.
B must be a 102 prior art, when B is an article not pat or pat app
I am asking "can Article B be used if Article B is NOT a 102 prior art?".
I think Article B cannot be used if Arcitle B is NOT any 102 prior art.
My support is here
Critical dates for prior art in OTDP defense are governed by § 102
http://depatentlaw.morrisjames.com/uploads/file/08%20335%20587.
Also as a reminder, 102(b) is created in order to retrospectively give
rights to inventors in one year and encourage publication without jeopardizing their rights. In another word, an article enters into the public's knowledge after its publication, BUT in a legal sense, it is not public before the one
year deadline. A skilled artisan (a legal concept virtual person) does NOT
know the article even if the article is published as long as the one year
deadline is not reached.
g., Oct 2008 if no priority claimed) could be cited and/or
application. For LZ's point 3, I think that is the
【在 f*****n 的大作中提到】
: quite weird objection. I thought a strong 103 rejection would have been
: given instead of ( or at least together with) the dp rejection. But seems
: that the dp rejection also focused on the obviousness, anyway. I agree
: with DANIELSD on the prior art citation and anything (including any
: publications with the same authorship) before the earliest filing date (e.g., Oct 2008 if no priority claimed) could be cited and/or
: combined with the first patent for the rejection of the second application. For LZ's point 3, I think that is the
: realty and it is fair that nobody should publish anything before filing an
: applicatin without the understanding that anything published is publically
: owned.
: By the way, in realty many examiners mention common knowledge for their
| f*****n
发帖数: 12752 | 8 you are probably right. publication B should be able to be sworn back and
removed from prior art. |
|
