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16 PATENTLAWthat even if the invention is not exactly the same as that
described in a patent or publication or that is in use or
on sale, if the difference is obvious, a patent cannot be
obtained. Examiners often provide rejections based on
their sense that it would be obvious to combine two or
more published patents or other publications that com-
plement each other. Of course, such a combination must
be obvious to a person having ordinary skill in the art,
and it must have been obvious at the time the invention
was made. (Often, by the time a patent issues 2 or 3 years
after the patent application was filed, or even when the
application was filed, it may seem to be obvious in light
of the prior art. However, the critical time to examine
obviousness is when the invention was made. As many
court decisions show, it is not always an easy thing to
cast away current knowledge and place oneself back to
the time the invention was made to determine whether it
was obvious.) Thus, assertions as to whether an invention
is obvious or not in view of the cited art can be highly
subjective.
U.S.C.§101 requires that an invention be useful. At
least three categories of subject matter have been iden-
tified by the Supreme Court that are not, by themselves,
patentable: laws of nature, natural phenomena, and ab-
stract ideas. The invention must be useful, concrete, and
tangible. For example, the CAFC inState Street Banksaid
that mathematical algorithms by themselves are unpat-
entable because “they are merely abstract ideas constitu-
ting disembodied concepts or truths that are not ‘useful.’ ”
Generally speaking, the requirement that an inven-
tion be “useful” is an extremely low bar to patentability.
Nonetheless, an invention can fail the usefulness test if
an applicant fails to explain adequately why the invention
is useful or if an assertion of utility is not credible. For
example, the invention considered inNewman v. Quigg
(1989) was considered to be a perpetual motion machine
and thus found to be inoperative (as going against the laws
of thermodynamics). It therefore did meet the usefulness
standard.
In addition to these requirements, a specification is re-
quired in the patent application that includes a written
description and at least one claim. The written descrip-
tion must describe the invention and teach enough about
it in sufficient detail so as to enable “one skilled in the art”
to make or use the invention. The written description must
also describe the “best mode” (i.e., the best way to carry
out the invention) known to the inventor, although there
is no requirement to point out a specific embodiment of
the invention as the best mode. (The first paragraph of
35 U.S.C.§112 discusses the requirements of the writ-
ten description.) The specification must conclude with at
least one claim that is the legal statement defining the
invention. Courts looks to the claims when determining
whether an accused party is infringing a patent. Claims
are discussed in more detail later in the chapter. Finally,
35 U.S.C.§113 sets forth the particular requirements for
drawings, which must be supplied as necessary to provide
an understanding of the invention.Patent Prosecution
The process of obtaining a patent, from filing of a patent
application to responding to office actions from theUSPTO, to paying the issue fee, is referred to aspatent
prosecution.The first step in the patent prosecution pro-
cess, other than invention itself, is often the conducting
of a “prior art” search. There is no obligation on the part
of an applicant to do a search (although there is an obli-
gation to report known material information to the PTO).
Nonetheless, performing a search is often a good idea. If
search results show that the invention is not novel, a long
and costly (and possibly doomed) prosecution process can
be avoided. Even if the invention still appears to be novel
after such a search, oftentimes the search helps the per-
son who ultimately drafts the patent application to focus
on those parts that are truly novel, by exposing those as-
pects that are well known or that have been described in
printed publications.
A search for U.S. and European patents and published
patent applications can be performed, for example, us-
ing respectively the USPTO’s online search facility and
the European Patent Office (EPO) online search facility
(see http://ep.espacenet.com). Most patent offices in other
countries have their own Web sites that can be searched.
A list of these Web sites can be found at the USPTO’s and
the EPO’s Web sites.
In addition, many useful documents and news items
may be found on the Web using standard Web searching
facilities. Although these are excellent sources, more ex-
tensive (and expensive) searches may be conducted using
proprietary databases that may contain articles from hun-
dreds or thousands of trade journals, professional publi-
cations, newspapers, magazines, and so on.
The next step is preparing or drafting the patent appli-
cation. As noted earlier, a patent attorney or agent often
does this, although inventors can represent themselves
before the PTO. The application is then filed with the PTO.
Once received by the PTO, an application is assigned an
application number and eventually assigned to an art
group, consisting of examiners who are familiar with
the particular field to which the application/invention
pertains.
Eventually the application is assigned to a specific ex-
aminer in the art group, who reviews the application in
view of both the results of his or her own prior art search
and any material information submitted by the applicant.
Typically, the examiner objects to one or more aspects of
the application, and in anOffice Action,rejects one or
more of the claims based on the prior art. Or the exam-
iner may object to unclear language in the specification or
an informality in the submitted drawings. An Office Ac-
tion is mailed to the applicant (or his attorney), and the
applicant must reply within a certain time frame or the
application will be considered abandoned.
The applicant can reply to the Office Action in several
ways. For example, the applicant can point out the dif-
ferences between the invention and the prior art cited by
the examiner in the Office Action, stressing that the in-
vention is not taught or even suggested by a knowledge
of the prior art. In the reply to the Office Action, the ap-
plicant can cancel claims, amend claims for clarity, nar-
row claims to overcome the examiner’s rejections, or even
broaden claims. New claims may also be added (at least in
response to a first Office Action). Corrections to the spec-
ification or drawings may also be made, but in any case,