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Patent
Rutgers University, Newark School of Law
Safrin, Sabrina

Patent Law
Professor Safrin – 2009
 
Disclosure Requirements – 35 U.S.C. §112, 1st ¶
3 separate requirements for the disclosure: 1)enablement, 2)best mode, and 3)written descript.
Note: These req’s pertain to the informative quality of the patent application rather than the technical merits(novelty,nonobvious,useful)
A deficiency under 35 U.S.C. 101 also creates a deficiency under 35 U.S.C. 112, 1st ¶
1) Enablement
The test of enablement is whether a PHOSITA could make or use the invention from the disclosures in the patent coupled with information known in the art w/o undue experimentation.
Atlas Powder Co. v. E.I. du Pont de Nemours & Co- The presence of inoperative embodiments within the scope of a claim does not necessarily render a claim nonenabled.
2) Best Mode
Different from enablement, requires applicant to disclose specific instrumentalities or techniques which are recognized at the time of filing as the best way of carrying out the invention.
Purpose: The purpose of the best mode requirement is to “restrain inventors from applying for patents while at the same time concealing from the public the preferred embodiments
2 req’s: Used by CAFC in Chemcast Corp.; a proper best mode analysis has two components:
(A)Subjective Inquiry: Determine whether, at the time the app was filed, the inventor knew of a mode of practicing the claimed invention that the inventr considered to be better than any other.
For Ex in Chemcast: the inventor considered a certain type of materials to be the best mode for making his grommet.
there is no reason to address the 2nd component and there is no proper basis for a best mode rej if the facts satisfy the 1st component, then, and only then, is the 2nd component analyzed:
(B) Objective Inquiry: Compare what was known in (A) with what was disclosed – is the disclosure adequate to enable one skilled in the art to practice the best mode?
Assessing the adequacy of the disclosure in this regard is largely an objective inquiry that depends on the level of skill in the art. Is the information contained in the specification disclosure sufficient to enable a person skilled in the relevant art to make and use the best mode?
For ex in Chemcast: Answer was negative b/c the application neither explicitly nor implicitly disclosed how to make and used the claimed grommet with the R-4467.
*A best mode rejection is proper only when the first inquiry can be answered in the affirmative, and the second inquiry answered in the negative with reasons to support the conclusion that the specification is non-enabling with respect to the best mode.
3) Written Description
Requires that the language of the patent claims presented or amended after the filing date of the application must find adequate support in the written description portion of the patent document.
Purpose: Guards against the inventor’s overreaching by insisting that he recount his invention in such detail that his future claims can be determined to be encompassed within original creation.
Analysis used in Vascath v. Markhurkar: The application as originally filed must convey with reasonable clarity to persons of ordinary skill in the art that, as of the applications filing date, the inventor was in possession of the subject matter subsequently claimed as her invention.
For ex in Vascath: Inventor claimed priority from an earlier filed design application which only dislclosed 1 possible diameter for tube, whereas utility app claim a range. à Enabled
 
 
 
 
 
 
 
Who
When
What
Where
A
Another
Before date of invention
Publicly known/used
in this country
Patent/Printed Publication
anywhere
B
Anyone
1 year before US Filing Date
Patent/Printed Publication
anywhere
Public Use/On-sale
in this country
C
Applicant
Before US Filing Date
Abandoned Invention
n/a
D
Applicant
Before US Filing Date
1) Filed Foreign Application, 2) Described same invention, 3)Filed > 1 year before US Filing, AND 4)Foreign Patent was GRANTED
foreign only
E
Another
Before date of invention
Filing Date of US Patent or Published Application
(not foreign filing) international application in this country or PCT filed after 11-29-00 and published in English and designated US.
F
Another
(Another inventor of that claimed subject matter should have been named)
G
Another (interference)
Before Date of Invention
“Made” and not Abandoned/Suppressed/Concealed
in this country
“Claimed”
In a US Application
An invention must be 1) Useful (101), 2) Novel (102), and 3) Nonobvious (103).
35 U.S.C. 102 Requirements
An invention must be 1)Novel and 2) there must be no loss of right.
Printed Publications – 102 (a) and (b)
Document must be sufficiently accessible to the public interested in the technology to be consi’d..
In Re Hall: a single copy of a doctoral thesis, properly cataloged in the collection of a German Univ Library qualified as a printed publication. Court said it “could constitute sufficient accessibility to those interes

te.
o       Experimental Use is use of an invention “only by way of experiment,” that is pursued with a bonifide intent of testing the qualities of the invention
o       Inventor must keep the invention under her control at all times
o       Sole purpose of testing must be to determine if the invention works and cannot be accomplished in any other way without exposing it to public.
 
Prior Invention – 102(g)-In determining priority under102(g) there shall be considered not only the respective dates of conception and RTP of the invention, but also the reasonable diligence of one who was first to conceive and last to RTP, from a time prior to conception by the other.
Determine 3 dates/time periods:
1. Date of Conception: The date of conception is the date at which there is the formation in the mind of the inventor, 1) of a definite and permanent idea of the complete and operative invention, as it is hereinafter to be applied in practice. And 2) a selection of a means of constructing said invention.
Oka: Conception of a chemical requires both the idea of the structure of the chemical and possession of an operative method of making it.
2. Date of Reduction to Practice: May be actual or constructive. Actual RTP occurs when a physical embodiment has been constructed that works for its intended purpose. Constructive RTP occurs upon filing of a patent application that satisfies the disclosure req’s of 112 ¶1.
3. Critical Period- Reasonable diligence from time prior to conception by second conceiver to reduction of practice by first conceiver.
Gould v. Schawlow: Merely stating that there were no weeks or months that the invention was not worked on is not enough.
In re Harry: statement that the subject matter “was diligently reduced to practice” is not a showing but a mere pleading.
A 2-day period lacking activity has been held to be fatal.
Diligence requires that applicants must be specific as to dates and facts
The period during which diligence is required must be accounted for by either affirmative acts or accept-able excuses.