Anticipation II Patent Law Sept 16 2004 Novelty

Anticipation II Patent Law Sept. 16, 2004

Novelty § 102 A person is not entitled to a patent if 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 1 st US App filed Expanded US App filed Aug. 1960 July, 1964

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 1959 1 st US App filed Aug. 1960 Expanded US App filed July, 1964 Intervening Ref 2 vening Ref 1

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 1 st US App filed Aug. 1960 Expanded US App filed July, 1964 + 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 patentability!

Genus claimed by Titanium Metals X Embodiments enabled and described in Russian publication 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?