Wednesday, April 26, 2006

Nested citations and inherent anticipation

PETER D. SMITH recently published a note entitled ANTICIPATING TOO MUCH: WHY THE COURT SHOULD AVOID EXPANDING THE DOCTRINE OF INHERENT ANTICIPATION [61 N.Y.U. Ann. Surv. Am. L. 823 (2006)] which cited to an article I wrote in Intellectual Property Today in 1999:

One might be tempted to read the Atlas Powder and MEHL/Biophile
holdings broadly, eliminating the recognition prong of Continental Can. However,
it is possible to reconcile these cases with Continental Can based on the
nature of the inherent element. n69 Lawrence B. Ebert wrote in November 1999 that
Atlas Powder stands for the proposition that "one can't patent 'scientific
understanding' of that which was already being done." n70 It is possible to read
these cases narrowly, merely limiting the Continental Can test when the
inherent element is solely the understanding of the process which is already
occurring in the prior art.

Talking about the EMI case, Smith also wrote:

Clearly this case did not overrule the second prong of the
Continental Can test; rather, the court merely clarified the limitation which cases
such as Atlas Powder and MEHL/Biophile had added to the test. "In cases where
the allegedly inherent element is simply a rule of natural law or a
theoretical mechanism of operation, there is no requirement that the element be
recognized by persons of skill in the art." n81 The opinion plainly acknowledged
that the recognition requirement is sensible for some claims but not for this
other type of inherent element. n82 Thus, EMI affirmed Ebert's notion that the
Atlas Powder holding should be read narrowly. n83

Footnote 69 was: n69. See, e.g., Lawrence B. Ebert, Inherent Difficulties, Intell.
Prop. Today, Nov. 1999, at 28; see also Feit & Warrick, supra note 10, at 19
(noting that Ebert "thought the two lines of cases could be reconciled based on
the nature of the claimed element that was missing from the prior art."). [IPBiz note: I almost got the idea that Smith was citing to Feit & Warrick citing to me, a nested citation.]

Footnote 71 was: n71. 268 F.3d 1342 (Fed. Cir. 2001); see also Feit & Warrick, supra
note 10, at 21 (concluding that the "EMI decision appears to agree with Ebert.").

In "Inherent Difficulties" in 1999, I was discussing the (then) recent case of Atlas Powder Co. v. IRECO Inc., 51 USPQ2d 1943, 1946-1947 (CAFC 1999).

The quote of mine used by Smith in 2006 appeared in the following context in 1999:

In this, Atlas Powder appears as a "scientific understanding" case
much as In re King. One can't patent "scientific understanding" of that which
already was being done. Although the particular prior art documents did NOT
explicitly recognize that air may act as the sole sensitizer (absence of
subjective knowledge of the authors of the prior art), the documents taught
explosive compositions in which air did act as a sole sensitizer, as measured by
objective knowledge. Thus, it is true that the recognition that interstitial and
porous air were inherent must be measured against the knowledge of one of
ordinary skill.

I suggested that Atlas Powder was NOT in tension with Continental Can, noting this text in Atlas Powder:

Once it is recognized that interstitial and porous air were
inherent elements of the prior art compositions, the assertion that air may act
as a sole sensitizer amounts to no more than a claim to the discovery of an
inherent property of the prior art, not the addition of a novel element.
Insufficient prior understanding of the inherent properties of a known composition
does not defeat a finding of anticipation.

The bolded sentence is important. One did not have to know, at the prior time, of the inherent property. The important point is that the property is inherent. An inherent property is inherent for all time. To illustrate that important point, I followed with an example using buckyballs. Smith did not quote it in 2006, but I have returned to that buckyball example several times.

Talking about the Glaxo decision on paroxetine hydrochloride hemihydrate, I cited to "Inherent Difficulties" in "There's Always Something There To Remind You," IPT, May 2003:

Note In re Seaborg, 328 F.2d 996 (CCPA 1964). Applicant argued
that a small amount of an unknown, unconcentrated isotope would have been
undetectable, and the CCPA concurred. However, what result if a new analytical
method were subsequently developed which made that small amount detectable?
Contemplate text from L. B. Ebert, "Inherent difficulties," Int. Prop. Today, Nov.
1999: To illustrate one issue in the interpretation of Continental Can, consider
the discovery of buckyballs. In 1984, workers at Exxon disclosed the
existence of C60, with the formula as determined by mass spectrometric measurement
n6 and a way to make said C60. (J. Chem. Phys., 1984, 81, 3322). They did not
disclose the correct structure of C60; Professors Smalley and Kroto proposed the
structure of C60 to be that of a truncated icosahedron in 1985. This was not
known to be correct until after the work of Huffman and Kratschmer in 1990.
Now, assuming that the synthesis of Exxon always led to C60 with the
icosahedral structure, would a patent claim to C60 in 1990 (with the truncated
icosahedral structure) be inherently anticipated by the Exxon work in 1984, even
though no one knew the structure in 1984, and in fact could not have proved the
structure until 1990? Assuming that one of ordinary skill would recognize the
inherent property, albeit at a later date, one might think there would be
inherent anticipation. (Of course, a 1990 claim to merely C60 would be
explicitly anticipated by the written description and enablement of the 1984

Returning to the 1999 article ("Inherent Difficulties"), I note that there is other text relevant to issues in 2006:

Endnote 8: Kitta MacPherson (Newhouse News Service), Science for Sale: with
research funded more and more by private industry, is the truth really what it
seems? Trenton Times, B1, B5 (Sept. 23, 1999). The federal share of funding
dipped below 50% in 1978 and currently is 30.2%.

Endnote 9: Ralph T. King, "Medical Journals Rarely Disclose Researchers
Ties," Wall St Jour., B1 (Feb. 2, 1999).

And, at a time BEFORE Jan-Hendrik Schon and Hwang Woo-Suk:

In a guest editorial in the September 6, 1999 issue of Chemical &
Engineering News n10 (at the invitation of Madeleine Jacobs), Professor Allen J.
Bard observed that there is a trend in scientific writing in which
"applications are implied to be just around the corner and, generally, the tone is more appropriate to Madison Avenue than sober science" and "in which, all
too frequently, the obstacles to real world applications are never
mentioned." Bard further noted: "As the pressure has increased to show applications of research, scientists who are doing sound and interesting basic research feel it
is necessary to tie these studies, however tenuously, to possible
applications. The danger here is that unfulfilled promises can lead to good programs
being canceled when practical systems aren't immediately forthcoming."

I foresaw a danger different from that visualized by Bard:

We return to buckyballs to illustrate a point. In the time period
1990 to 1993, Chemical & Engineering News strongly "hyped" potential
applications of buck-minsterfullerenes. In 1993, Professor Bard declined to accept for review at the Journal of the American Chemical Society a paper which showed
ambient oxidation of fullerenes, which paper was subsequently published in the
Journal of Physical Chemistry (1994, 98, 3921-3293) and which paper illustrated
potential difficulties with applications.


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