Wednesday, August 29, 2012

Further thoughts on Graves and Donohue on anticipation under 35 USC 102

In patent interference 104,834, Genise v. Desautels ,action mailed 23 May 2011, one finds text relevant to the cases of In re Donohue and In re Graves on anticipation.

To the extent that Genise adopts some kind of an obvious-to-combine notion for determining anticipation under 35 U.S.C. § 102, that is improper. At issue is what one with ordinary skill in the art would understand as the subject matter disclosed, not what one with ordinary skill in the art may assemble or put-together based on that disclosure. Genise cites to In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995), cert. denied, 116 S.Ct. 1362 (1996), indicating that Graves cites, in turn, to In re LeGrice, 301 F.2d 929, 133 USPQ 365 (CCPA 1962) and In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed. Cir. 1985). But the reliance on LeGrice and Donohue is misplaced. What was being discussed in those cases concerns the principle that a prior art reference cannot anticipate a claimed invention if its disclosure is not “enabling” as to what was being taught, and a judicially imposed requirement that aside from describing what is being claimed, an anticipatory reference must also “enable” one with ordinary skill to possess the invention from the perspective of making and using it. That an anticipatory prior art reference’s disclosure must be enabling as to the claimed invention does not dispense with the fundamental requirement that the claimed invention must first be described in the prior art reference.

As for the case In re Graves, supra, it appears to support Genise’s position by stating as follows:

Even assuming, however, that the dissent’s construction of claim 4 is correct, Rockwell nevertheless anticipates claim 4, even if it does not specifically disclose simultaneous monitoring of the output points, if simultaneous or parallel monitoring is within the knowledge of a skilled artisan. [Citations to In re LeGrice and In re Donohue omitted.]

It is evident that the above-quoted portion of In re Graves constitutes only dicta and thus is not controlling. Moreover, to the extent that In re Graves approves the idea of going beyond the four corners of an anticipatory reference as would be understood by one with ordinary skill in the art, that is contrary to a plethora of precedent already identified above. Note also Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir. 1995), which states that a claim is anticipated only when a single prior art reference discloses each and every limitation of the claim and that the disclosure need not be express but may anticipate by inherency where it would be appreciated by one with ordinary skill in the art. In that context, the “appreciation” refers to that which is inherently described in the reference, not something in addition thereto.

**It is worthwhile reviewing the facts of In re Donohue. Of interest to chemists is that the Donohue case involved an affidavit by Ellis Fields, a well-known figure in petroleum chemistry, whose affidavit ultimately was unsuccessful in Donohue. From the case:

Nomura et al. ("Nomura")3 discloses twelve 2,2',6,6'-tetramethylbiphenyls ("TMBP") which are 4,4'-disubstituted with NH2 , NMe2 , OH, OMe, Cl, Br, I, CO2 H, CO2 Me, CN, NO2 , or H substituents. Methods of preparing all these compounds, except those disubstituted with CO2 H or CO2 Me, are set forth in Nomura. Nomura's disclosure of how to make 4,4'-dinitrile (or dicyano) TMBP is particularly significant, because Lincoln4 and Wagner et al. ("Wagner")5 teach, generally, the preparation of carboxylic acids from nitriles by hydrolysis.

In Donohue I, a majority of the Court of Customs and Patent Appeals ("CCPA") affirmed the PTO's rejection of appealed claims 1, 5, 6, and 76 under 35 U.S.C. Sec. 102(b). Id. at 127, 207 USPQ at 200. The basis for the rejection was, as it is here, Nomura with reference to Lincoln and Wagner. Id. at 126, 207 USPQ at 199.

A minority of the CCPA voted to reverse the PTO's decision, because they concluded it was uncertain from the text of Nomura that the dicarboxylic acid TMBP and dimethyl ester TMBP were ever prepared. Id. at 129, 207 USPQ at 201. Accordingly, Nomura's disclosure was, in the minority's view, no more than a mere naming of the claimed compounds which is insufficient to constitute an enabling disclosure. Id. at 129, 207 USPQ at 201.

So, in Donohue, the prior art reference named the anticipating chemical compound, which, however, was not in fact "possessed" (i.e., synthesized) by the author of the reference. The idea that the compound could be made was possessed by the author. As to later discussion by various patent law professors of written description/enablement being the same, Donohue is in excellent counter-example. Further, it refines the concept of "possession." Separately, it might seem that the Fields affidavit was hearsay.

**The interference case also speaks of incorporation by reference:

On such general manner of incorporation, we cannot assume that Genise’s inventors recognized and appreciated every single detail that happens to be contained in the disclosure of U.S. Patent Nos. 4,850,236 and 5,105,357. In that regard, note Advanced Display Systems v. Kent State University, 212 F.3d 1272, 1282, 54 USPQ2d 1673, 1679 (Fed. Cir. 2000), in which the Court of Appeals for the Federal Circuit stated:
Incorporation by reference provides a method for integrating material from various documents into a host document – a patent or printed publication in an anticipation determination – by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. [Citation omitted.] To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. [Citations omitted.] [Emphasis added.]

**In the "transaction history" for the file of US 5,573,477 , one finds:

05-02-2002 File Marked Found
07-28-1998 Mail Miscellaneous Communication to Applicant
07-28-1998 Miscellaneous Communication to Applicant - No Action Count
07-20-1998 Case Found
07-08-1998 Official Search Conducted
06-30-1998 Case Reported Lost


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