Anticipated yet Nonobvious

Cohesive Tech v. Water Corp (Fed. Cir. 2008)

Perhaps the most important portion of this case relates to the notion that novelty and nonobviousness are separate and distinct inquiries. And, that a patent may be found anticipated yet nonobvious.

On summary judgment, the district court Cohesive’s HPLC patent might be obvious, but certainly was not anticipated.  Water appealed — arguing that the judgment was logically incorrect if anticipation truly is the “epitome of obviousness.”  On appeal, however, the Federal Circuit confirmed that novelty and obviousness are separate and distinct — one does not necessarily follow the other.

“While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different.

The court suggested two circumstances where an anticipated claim might still be nonobvious.  First, secondary considerations of nonobviousness may exist that are not relevant in an anticipation claim. Second, although inherent elements apply in an anticipation, inherency is generally not applicable to nonobviousness. 

“[O]bviousness requires analysis of secondary considerations of nonobviousness, while secondary considerations are not an element of a claim of anticipation. And although anticipation can be proven inherently, proof of inherent anticipation is not the same as proof of obviousness.”

The court also gives an example —

“Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.”

Judge Mayer dissented — arguing that anticipation is a subset of nonobviousness. “Although a claimed invention can be obvious but not anticipated, it ‘cannot have been anticipated and not have been obvious.’ In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).”

“The majority’s assertion that a claim can be anticipated but not obvious, flies in the face of a long line of precedent to the contrary. Not surprisingly, it is unable to cite a case remanding to the district court for consideration of anticipation, while at the same time sustaining a determination that claims at issue are not obvious.”

The practical impact of this case:

1. Anticipation still gets to a jury even when the defense has a credible obviousness argument.
2. The Majority’s example might be seen to narrow the scope of documents available for obviousness arguments along a temporal axis. (References from a long time ago shouldn’t be combined with more recent references.)
3. In some ways, the ‘common sense’ approach of KSR encourages this decision. While anticipation may still be a formal construct, obviousness should focus on what really would have been obvious at the time of the invention.
4. Professor Ochoa (Santa Clara) reminded me about the European rule that does not allow “secret” prior art to be used in obviousness (inventive step) analysis.  If the US so modified its rules, perhaps the distinction between obviousness and anticipation would begin to ring true.

Comments

[TJ]

Actually, isn't the most obvious example the classic case of In re Schreiber--anticipated by non-analogous art?

[anon]

From the MPEP:

Claim [1] rejected under 35 U.S.C. 102([2]) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over [3].

Examiner Note

1. This form paragraph is NOT intended to be commonly used as a substitute for a rejection under 35 U.S.C. 102. In other words, a single rejection under either 35 U.S.C. 102 or 35 U.S.C. 103(a) should be made whenever possible using appropriate form paragraphs 7.15 to 7.19, 7.21 and 7.22. Examples of circumstances where this paragraph may be used are as follows:

When the interpretation of the claim(s) is or may be in dispute, i.e., given one interpretation, a rejection under 35 U.S.C. 102 is appro­priate and given another interpretation, a rejection under 35 U.S.C. 103(a) is appropriate. See MPEP §§ 2111- 2116.01 for guidelines on claim interpretation.

When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112- 2112.02.

When the reference teaches a small genus which places a claimed species in the possession of the public as in In re Schaumann, 572 F.2d 312, 197 USPQ 5 (CCPA 1978), and the species would have been obvious even if the genus were not sufficiently small to justify a rejection under 35 U.S.C. 102. See MPEP §§ 2131.02 and 2144.08 for more information on anticipation and obviousness of species by a disclosure of a genus.

When the reference teaches a product that appears to be the same as, or an obvious variant of, the product set forth in a product-by-process claim although produced by a different process. See In re Marosi, 710 F.2d 799, 218 USPQ 289 (Fed. Cir. 1983) and In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). See also MPEP § 2113.

When the reference teaches all claim limitations except a means plus function limitation and the examiner is not certain whether the element disclosed in the reference is an equivalent to the claimed element and therefore anticipatory, or whether the prior art element is an obvious variant of the claimed element. See MPEP §§ 2183- 2184.

When the ranges disclosed in the reference and claimed by applicant overlap in scope but the reference does not contain a specific example within the claimed range. See the concurring opinion in Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993). See MPEP § 2131.03.

[curious]

TJ makes a good point.

[Chinese River Dolphin]

"non-analogous art"

TJ, I'm wondering if the non-analogous art argument has defeated an obviousness rejection since KSR?

[Malcolm Mooney]

Well, here we are: the Federal Circuit has a new stupidest case of all time. Try to believe that this argument was actually written:

"“Consider, for example, a claim directed toward a particular alloy of metal. The claimed metal alloy may have all the hallmarks of a nonobvious invention—there was a long felt but resolved [sic] need for an alloy with the properties of the claimed alloy, others may have tried and failed to produce such an alloy, and, once disclosed, the claimed alloy may have received high praise and seen commercial success. Nevertheless, there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy. While the prior art alchemy textbook inherently anticipates the claim under § 102, the claim may not be said to be obvious under § 103.”

Okay, now let's delete some of the dust-kicking from the paragraph, fix the typo, and witness the logical trainwreck in Judge Linn's numbskull hypothetical:

“Consider, for example, a claim directed toward a particular alloy of metal. ...[T]here was a long felt but unresolved need for an alloy with the properties of the claimed alloy...[There was also] a ... textbook that ... describes a method that, if practiced precisely, actually produces the claimed alloy."

See the contradiction? You can't have an "unresolved need" AND an anticipatory reference. The undeniable fact is that, for patent law purposes, the need for a claimed invention has been unambiguously "resolved" when a reference is found that anticipates the claimed invention. Because our system assumes those skilled in the art are assumed to have perfect knowledge of the art, there can be no "unresolved need" when anticipatory art exists. If you put a man in a room with a bucket of fried chicken hanging from a string above his head and the man starves to death because he won't stand on the table, it's incorrect to say he wasn't provided with food.

Judge Linn's typo -- referring to the "unresolved need" as a "resolved" need -- is perhaps a subconscious recognition of the lameness of this hypothetical.

This is going en banc and it's going to be overturned in two seconds.

[Malcolm Mooney]

Dennis: "Professor Ochoa (Santa Clara) reminded me about the European rule that does not allow “secret” prior art to be used in obviousness (inventive step) analysis. If the US so modified its rules, perhaps the distinction between obviousness and anticipation would begin to ring true. "

I don't follow that last part.

I do believe, however, that 102(g) art is under-utilized by defendants who seek to invalidate patents as obvious. The problem is that once defendants start using 102(g) regularly, the rules will be changed because the use of "secret" prior art for determining obviousness opens up cans of worms that should never have been sealed in the first place.

[Mark Nowotarski]

"I'm wondering if the non-analogous art argument has defeated an obviousness rejection since KSR?"

Yes, Ex Parte Ralph Kurt , Appeal 2007-4172 Nov 30, 2007
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20074172-11-30-2007-1

"___________ is non-analogous art because it is not reasonably pertinent to any problem regarding __________ in the ___________ arts. KSR, 127 S. Ct. at 1742"

[curious]

So when the applicant filed his application there could be per se be no "unresolved need" because of the presence of the anticipatory art?

[pds]

MM has never met a patent that he didn't think was obvious. As soon as I started reading this case, I was thinking ... "what is MM going to blather about this time ... I hope he doesn't pop a blood vessel."

I think Dennis pointed out (correctly) that the analysis under 102 is not simply a subset of 103 (i.e., "While anticipation may still be a formal construct, obviousness should focus on what really would have been obvious at the time of the invention"). References available under 102 may not be available under 103.

Going with the Court's hypothetical, support that the book describes a method, which when followed, arrived at the claimed alloy. However, it is possible that the method was never practiced and the result of such a method was lost to history. In such a situation, the "long felt but unresolved need for an alloy with the properties of the claimed alloy" is a correct statement. Without the method actually being practiced, these properties would not have been known (or perhaps the properties couldn't even have been measured at the time or would not have had a useful purpose at the time). Regardless, although the alloy may have been anticipated, this does not necessarily equate to obviousness.

Let's use another example. Say that an invention for a new cure for cancer is very similar, in composition, to very bad tasting beer. Suppose that somebody printed a recipe for a beer that was panned as the "worst tasting beer" in recorded history, and this recipe anticipated the cure for cancer. 102 rejection, but not 103.

Same hypothetical but assume that the claim for cancel included one element that was very commonly added to most cancer drugs, and this one element was the difference between the bad tasting beer and the claimed invention. In most cases, the addition of this particular element would have been obvious. However, the primary reference should be (properly) argued as being non-analogous art, which precludes a determination of obviousness based upon that reference.

[Malcolm Mooney]

pds "it is possible that the method was never practiced and the result of such a method was lost to history."

There is no "lost to history" in US patent law unless all evidence of the otherwise anticipating publication has been erased. You can hypothetical all you want but I think it's fair to require, at a minimum, that your hypothetical assumes current patent law regarding the availability of prior publications is valid.

"Say that an invention for a new cure for cancer is very similar, in composition, to very bad tasting beer. Suppose that somebody printed a recipe ... and this recipe anticipated the cure for cancer."

Then the invention is anticipated and it's obvious (notwithstanding this ridiculous case).

"Same hypothetical but assume that the claim for cancer included one element that was very commonly added to most cancer drugs, and this one element was the difference between the bad tasting beer and the claimed invention. In most cases, the addition of this particular element would have been obvious. However, the primary reference should be (properly) argued as being non-analogous art,"

Wrong.

http://www.newsmax.com/health/Beer_Fights_Cancer/2008/03/18/81234.html

Researchers are always looking for the magic bullet to kill cancer, and now they may have found it in a surprising place – a glass of beer! (Who knew?) It turns out that hops, which is the flavor component of beer, contains a cancer-fighting compound called xanthohumol.
-------------

Took me 2 seconds to find that, by the way. Welcome to the world of biotech patenting, where inventing requires a fair amount of perspiration and bogus "non-analogous art" arguments are quickly and properly crushed.

[AllSeeingEye]

Does anyone who reads Patently-O really need to have a link to the definition of "epitome"???

[pds]

"There is no 'lost to history' in US patent law unless all evidence of the otherwise anticipating publication has been erased. You can hypothetical all you want but I think it's fair to require, at a minimum, that your hypothetical assumes current patent law regarding the availability of prior publications is valid."

The hypo used by the Fed. Cir. and myself stated that the RESULT of the method described in the prior art anticipated the claimed alloy. Notwithstanding, the availability of "prior publications" is different depending upon whether or not the reference is 102 or 103. This is well-established case law that you don't appear to be well-versed in.

As for the beer hypothetical ... I'm sorry, or priority date antedate your reference ... cannot use it. Also, this beer is made without hops, so even if it was good art, the cancer-fighting compound attributed to hops is not in this beer.

BTW ... as you should very-well know ... the fact that a product may include a cancer-fighting compound doesn't mean that it does any good. Being able to deliver the compound, in the correct dosage, form, etc., can make all the difference.

http://www.organicashitaba.com/beer.html

"The molecule is so rare that a person would have to drink about 120 gallons of beer -- or roughly 1,300 12-ounce bottles -- every day to reap the benefits."

Your obviousness evidence is looking pretty weak.

[GP]

This is brilliant.

Anybody have any doubts left that the patent system is approaching banana republic status?

Can you imagine, a week ago, what you'd have said to your Thai/Russian/Mexican associate if they wrote to you, "well, it's plainly anticipated, but it may not be obvious under our law."

Hah!

Seriously, what more proof do you need the entire system is a train wreck in slow motion?

[pds]

"Can you imagine, a week ago, what you'd have said to your Thai/Russian/Mexican associate if they wrote to you, "well, it's plainly anticipated, but it may not be obvious under our law."

I would have e-mailed them (informally) back:

"Congratulations, you have a better handle on U.S. patent law than many of the posters that frequent the patentlyo.com website. What is particularly sad is that many of these same posters hold themselves out to be practitioners of U.S. patent law. Aren't you glad that you have me working for you?"

[anon]

I can understand the court's argument that something may be anticipated yet nonobvious.

For example, the prior art discloses a catalyst composition which comprises between 5 and 95 wt% palladium. Applicant claims a catalyst composition comprising between 13.5 and 14.5 wt% palladium. Assuming Applicant is able to show unexpected results or strong advantage over the art for making a catalyst with the very NARROW claimed range even though such range is encompassed within that very BROADLY disclosed by the prior art, then the argument can conceivably be made that the claimed catalyst composition is NOT obvious because the PHOSITA with knowledge of the prior art reference would have no reason, motivation, etc (given in the prior art reference or otherwise) to choose the very narrow and specific claimed catalyst range. That argument is moot, however, if the claims were rejected under both 102 AND 103 - that's exactly why Examiners use the combined 102/103 rejection. In either case, if the 103 rejection can be overcome, the 102 rejection remains and the end result is exactly the same - no patent issues - evidence of unexpected results not being relevant to the issue of anticipation. So in the end, I don't see that the court's distinction really matters that much (if you agree with the premise that something may be anticipated yet nonobvious or not), because the end result is exactly the same - no patent issues.

[TJ]

I really don't understand those who think this decision is the end of the world. To GP's hypothetical associate, I would have replied, "If it is clearly anticipated, why do I or anyone else care whether it is obvious?" As Dennis's conclusion kind of indicates, this case has virtually no practical consequences outside of a few esoteric scenarios.

There are certainly scenarios where we would find something anticipated but which, in the absence of perfect anticipation, we would not normally consider to be covered by the obviousness doctrine. Examples:

--anticipation by non-analogous art.
--anticipation by art that disparages the invention, but describes its existence.
--anticipation despite commercial success, widespread praise, and copying of the patentee's product.

For these categories, we can either say that they are "anticipated but not obvious," or that they are "obvious only because they are anticipated." That is, we could create a special category of obviousness where the normal rules of analogous art and secondary considerations do not apply, that category being inventions that are anticipated. This is just a matter of labels.

Mayer's dissent effectively would create such a category because of statements in past cases. But aside from formalism, I don't understand why some commentators here seem to insist that we must create such a category of obviousness prior art that is exempt the normal rules of obviousness analysis.

[gejrmmot]

The concept of whether the anticipation should be included inside the scope or outside the scope of obviousness may only be a scheme from Uncle Sam to confuse the public and ask the applicant to pay more governmental fee for applications filed with the Office.

[AllSeeingEye]

It just goes to show that every case needs to be taken individually. If patent practice were susceptible to a set of easily applied rules, then we could all go home since a machine could do our job. Of course I'm pretty sure a machine is already doing Mooney's job.

[Malcolm Mooney]

anon: "For example, the prior art discloses a catalyst composition which comprises between 5 and 95 wt% palladium. Applicant claims a catalyst composition comprising between 13.5 and 14.5 wt% palladium. Assuming Applicant is able to show unexpected results or strong advantage over the art for making a catalyst with the very NARROW claimed range even though such range is encompassed within that very BROADLY disclosed by the prior art, then the argument can conceivably be made that the claimed catalyst composition is NOT obvious "

Wrong. If the prior art is enabled for the recited range range, it anticipates the composition. End of analysis.

[Malcolm Mooney]

pds "The hypo used by the Fed. Cir. and myself stated that the RESULT of the method described in the prior art anticipated the claimed alloy."

False, pds. And I've warned you in the past about playing stoopit. The Fed. Cir. hypo states verbatim:

"the prior art alchemy textbook inherently anticipates the claim under § 102"

You stated verbatim: "the recipe anticipated the cure for cancer."

This is the beauty of preserving text in the comments. It's all archived and very easy to check for accuracy and consistency. In a way, it's what Judge Mayer was getting at in his dissent.

[Malcolm Mooney]

TJ: "I really don't understand those who think this decision is the end of the world."

I don't either. Who said that?

[Malcolm Mooney]

pds "the fact that a product may include a cancer-fighting compound doesn't mean that it does any good. Being able to deliver the compound, in the correct dosage, form, etc., can make all the difference."

That's nice. But it's analogous art.

"As for the beer hypothetical ... I'm sorry, or priority date antedate your reference ... cannot use it. Also, this beer is made without hops, so even if it was good art, the cancer-fighting compound attributed to hops is not in this beer."

The goalpost store called. They want to hire you immediately to help in their warehouse.

[anon]

>

Agreed. It may still be "nonobvious" even if anticipated, though it doesn't change the result that the prior art anticipates the composition.

[Que?]

A range of 5 to 95% anticipates a range of 13.5 to 14.5%? Seriously?

[e6k]

MM, I understand what you're trying to say, but the alloy example does ring true. People could have been woefully ignorant of "A method to make ye olde cast iron skillet by rubbing this type of rock on it while it is hot" that actually produced "iron titanium super duper hardest alloy ever made" at the time of the invention. Nobody might have ever known that it even did produce Iron titanium alloy until a defendent desperate for art figured out that it did by guessing it might and then performing the method and doing tests on the alloy. I've always been taught anticipation is a subset of obviousness iirc but there is some merit to the way this decision is viewing things. That said, it is easier to go through life with a simplified patent system where obviousness contains all of anticipation.

"References available under 102 may not be available under 103"

WTF do you know, me and pds agree on something.

Also, I'm surprised that all of you missed the biggest ramification of all that comes from this decision (if it holds).

You're a prosecutor. You recieve back a rejection in the form of a 102, yet, you can plainly see that 103 does not apply (as per this type of holding). You already have "non-obvious" limitations in the claim, so you don't need to worry about getting hit with a 103 when you o so slightly amend around the 102. In other words, you don't have to concern yourself about whether or not the limitation you are adding is a mickey mouse limitation, anything to get around the 102 is A OK.

Do you not agree? That's a much bigger ramification for prosecution folk.

"That's nice. But it's analogous art."

Yes, I'm pretty sure MM got you on that one. Even if the ref is antedated and your product is different I'm pretty sure that it doesn't matter for the analysis of if the other piece of art is analogous art.

[Malcolm Mooney]

"A range of 5 to 95% anticipates a range of 13.5 to 14.5%? Seriously?"

I recommend reading the comments carefully and taking time to consider the most correct formulation of the question you are attempting to ask.

[MaxDrei]

"Temporal"? Sounds like the John Duffy "Timing" theory of obviousness, no? As to Prof Ochoa, has he been reading the thread over on the Prospector? Dennis, in Europe, obviousness is tested through the template of the PHOSITA at the date of claim. It goes without saying, that stuff not yet published at that date isn't available. Novelty is for something else, sorting out a string of Applicants, all of whom filed before anything got to be obvious, but there was a time order, of when they first lodged at a PTO an enabling disclosure of the invention they claim. As you surmise, simple and logical, and not using for obviousness attacks all those still-to-be-published US patent specns.

[Malcolm Mooney]

e6k "Nobody might have ever known that it even did produce Iron titanium alloy until a defendent desperate for art figured out that it did by guessing it might and then performing the method and doing tests on the alloy."

That sounds like so-called "accidental anticipation" to me and the last time I checked, "accidental anticipation" is not anticipation at all.

Judge Linn is talking about prior art references that anticipate (and invalidate) a claimed invention, period. In his hypothetical, there is no issue as to the whether the prior art inherently anticipates the patent. That's an assumed fact. And that's where the logical disconnect comes in. If the claimed invention is anticipated, there is no *unresolved* need. If the claimed invention was anticipated, the need was *in fact* resolved before the priority date, but the patentee/applicant was ignorant and is now receiving an education courtesy of the defendant and/or Examiner.

While prone to mis-citation, the phrase "anticipation is the epitome of obviousness" does make a certain amount of sense. Or at least it used to before this decision.

[AllSeeingEye]

There is a USPQ case that has to do with 102 anticipation (or lack thereof) in view of, for example, functional limitations. You can imagine a scenario where the structure is arguably present in some basic form but the function is not disclosed.

Consider, if you will, the following hypothetical example claim,

"...a fuel intake structure for directing a fuel air combination, the structure comprising: A) a mass flow metering valve; B) an intake body, and C) an intake valve, wherein D) the mass flow metering valve is constructed so as to provide a wonderful and amazing function."

There is no doubt that the structure of A, B, and C belong to the prior art. However, D is a functional limitation of A and is the point of novelty of the claim.

There is a case I recall (but don't remember the cite) that requires an anticipatory reference to, by definition, disclose the features of the claim - identically as arranged in the claims, e.g. in the manner claimed.

In the article, the alchemist's disclosure by that standard would not be anticipatory since it arguably does not disclose the features in the manner claimed.

I tend to agree that proper anticipation obviates obviousness. If it doesn't, then perhaps it is not a proper 102 reference. In other words, an alleged "anticipatory" reference that is somehow non-obviating writes its own death sentence.

[Malcolm Mooney]

MD "As to Prof Ochoa, has he been reading the thread over on the Prospector? "

Linky?

[MaxDrei]

Sorry MM. Installing such a link is beyond me, from this station, this morning, with my poor grasp of tech. But if you go right, one column, to Dennis's friends, you can click on Patent Prospectors, and then scroll down to October 09.
Or maybe some other nice kind person can give a link to Malcolm?

[e6k]

"prior art inherently anticipates "

Yes MM that's my point, their hypo says "inherently". Not "explicitly". So the people that wrote the ancient scroll or whatever likely didn't even know what they had. But I don't know anything about the accidental anticipation so I don't know maybe my hypo isn't anything other than that.

Or, perhaps that's their point. Accidental anticipation isn't anticipation...

Either way, if the ancient scroll knew of the alloy inherently/explicitly that doesn't mean that modern people may be having a huge need for it in different industries but nobody recalled it.

http://www.patenthawk.com/blog/2008/10/anticipation_without_obviousne.html

[MaxDrei]

I've now read the opinion and the dissent. This case is more about how to mis-characterize and mis-apply a precedent, isn't it, than about muddling up novelty and non-obviousness. I thought it was trite law that there are only two ways a prior art reference can deprive a claim of novelty namely 1) when it gives "clear and unmistakeable directions" to something within the scope of the claim and 2) when the "inevitable result" of following the instructions in the reference delivers something that is within the scope of the attacked claim. Either one of those would be enough to render the claim "obvious" to the PHOSITA. Citing "secondary considerations" as proof that the anticipation (the majority's Textbook of Alchemy) doesn't render a claim obvious, strikes me as putting the cart before the horse. In other words, let's do the "primary considerations" first, shall we, before we move on to the tie-breaking "secondary considerations" of non-obviousness.

[e6k]

Yes indeed, after having read the more complete version of the story at the prospector the judge's decision makes more sense. In effect, they ruled that there is nothing in the precedent preventing a jury from finding however they feel like it on both the issue of 1. anticipation and 2. nonobviousness. And there can be no "clear error" on which to reverse this it doesn't seem MM, because the only thing that could even be in dispute is if the jury is made up of reasonable people and also whether or not they are free to decide any which a way as they please on any given question. Since nobody disputes that the jury was made up of reasonable jurors then the only question is whether or not they can decide however they so please.

IMO it sounds like the jury fubarred this one by not understanding obviousness (they gave way too much weight to the secondary considerations perhaps) too well and the appeals court refused to clean up their mess because there was no precedent for controlling juries in the particular manner that would be required.

Looking at it that way this case doesn't seem to change anything other than perhaps what D concluded. D you didn't include a very good analysis I guess you wanted us to have to read the case eh?

[e6k]

It seems to me that all they needed to do was review the claims and see if every limitation was met in any reference. I do this every day. Why is it so hard for these folks?

[e6k]

Prospector notes:

"Obviousness can also be shown with a single reference that is deficient in modest aspects well known in the prior art. That is where obviousness comes closest to anticipation, which also allows for inherency."

One question though. What if the whole "invention" in question is merely "modest aspects well known in the art? Does a blank sheet of paper prove obviousness? What about one with my name written on the top?

[MaxDrei]

6K, if I might ask, what do you think about the clarity of the term "rigid" in the claim, and the adequacy of the District Court definition of "rigid" namely, an object's capacity to withstand SUBSTANTIALLY zero changes in density and volume under packing pressures of at least ABOUT 5000 psi and as a consequence SUBSTANTIALLY to resist plastic deformation under such pressure. I can see that crystalline materials have a yield point and an elastic limit but we're not talking metals here, are we? Am I not right, that amorphous materials deform, in a time-dependent way, even under modest stress? How long will the court wait, while the 5000psi is imposed, to see if the material slowly deforms under that load? Would you allow such a claim today, in the PTO 1) without the definition or 2) even with that court-crafted definition?

[e6k]

Max I think you're addressing my posts in another thread. You'll have to link me to the rigid gels thread if you want me to review it.

[MaxDrei]

6K, sorry. I had forgotten all about the rigid gels case. If I remember right, that was a case where the PHOSITA knew that there were two categories of gel on the market, rigid and (something else). But, here in Cohesive v Waters, there is no such helpful distinction. Instead, the infringer says "Mine isn't rigid" and the patent owner's technical expert said "Well, I tested it, and thought it rigid". Jury found it rigid. I'm curious now, as to the extent of X-exam, of that tech expert but also curious whether the PTO is more rigid these days, in its deliberations whether such relative terms in claims add any meaning to the claim.

[way out of my league]

I don't understand the comments here. I think the majority got it right.

If a reference says, "You could make product A+B, but you shouldn't because... (insert disadvantage)", that provides anticipation of product A+B, but also teaches away from making it. 102 anticipated, but 103 non-obvious. What am I not understanding?

[MaxDrei]

Good question (although "teaches away" plays hardly any role in Europe). Do patent owners really win, in the USA, these days, on "teaching away" when the subject matter of the claim has already been found old? Why bother to argue? In your example, which came first, the teaching away reference, or the enabling disclosure of Product A+B? The person who contributed the enabling disclosure of A+B to the prior art; that person wasn't "taught away" were they?

[Astacus]

I enjoyed reading this discussion, but I am missing something.

Is it not the case that claims are examined first for anticipation and then, if not anticipated, for obviousness? So if a claim is found anticipated, it is unpatentable (first line of 35USC102). Going on to examine obviousness appears to be unnecessary. Whether or not the claimed invention is also (possibly) not obvious is moot, no?

One might try to argue that the anticipation was accidental. Even then if the whole claim scope was anticipated and no narrowing amendment is available, the claim is dead. Accidental anticipation of the whole claim scope is fatal. Even in Europe, where for example a single chemical compound which accidentally anticipates a Markush group, can be disclaimed, you can't disclaim the whole lot and yet still have a patentable claim.

It seems to me that in the alloy example given by the court, the question is whether or not the alchemy disclosure is novelty destroying for the alloy (the alloy itself was not recited), if so then the claim is dead, and this is an unfortunate result of the law as it stands on novelty. If we feel this is unfair on the patentee, then we need to make a tweak to the law on novelty, not try to drag this argument kicking and screaming into the realm of obviousness.

If it was found not to be novelty destroying, then we have the opportunity to argue obviousness and we are in the mire of whether or not the art is sufficiently remote to be irrelevant.

Would the POSITA consider an alchemy text, or even a historical document of some great age, as a serious starting point when setting out to make a particular type of alloy? No of course not.

[e6k]

Max, so far as I can tell, we would not give two crps about the definition of rigid. We would use our own definition of rigid (which I'm sure the people that work in that art have something they like to use regularly) and so long as no issue came up in prosecution then I don't think we would just randomly request a definition of "rigid". It only became an issue at trial in this case.

As to the definition they came up with ... meh, whatever suits their purpose. It seems they relied on that guy that sent in the dec. to come up with most of it. It does seem pretty clear from the guy's dec that they disclaimed polymeric materials. "divinylbenzene AND THE LIKE" is what they said, and the appeals court is trying to say that only the specific ones in the reference (I suppose divinylbenzene and a handful of others) were the ones disclaimed. I can't say for sure based on the small snippets given but it appears that the appeals court is messing that one up. Have to ask a polymer guy about the difference in rigidities between a copolymer of divinlyben and divinly ben is.

[CJ]

Two questions from Korea:
1. U.S. patent guys like to discuss at 2, 3 am?
2. Is it a European law that a secret prior art can be used as a reference for 102 or 103 rejection? Pls, let me know the link or citation.
Thanks.

[MaxDrei]

CJ, in Europe, the test for the obviousness prior art is "made available" to at least one member of "the public" anywhere in the world. If Opponent is relying on art you think is "secret" then say that it hasn't been made available to any member of "the public".

As to novelty, you can't go giving patents to filers who came second. So, the guy who filed for the same subject matter, the day before you, has a novelty attack against your filing, using the whole content of his filing, but his filing is NOT available for obviousness attacks on yours.

I think this scheme is irreducibly simple. However, it is devilish hard to get it across to many US patent attorneys. Thanks for giving me the chance to state it, yet again.

[Astacus]

CJ

Can't comment on 1., but in answer to 2. and assuming I have understood your question (apologies if this is too simplistic):

EP law on Novelty is Art. 54EPC, on obviousness it Art. 56EPC.

Europe does not rely on US law, although US jurisprudence is often referred to.

The law with regard to novelty has some fundemental differences at the level of statute, the law with regard to inventive step, ...well.... lets just say, we agree to disagree.

In Europe any disclosure "made available to the public" (Art52(2)EPC) can be used as prior art for novelty and obviousness. There can be no "Secret Prior Art" since it is not available to the public.

Secret prior users get certain dispensations to continue use.

HTH

[Astacus]

Max, You beat me to it

[CJ]

MaxDrei, interesting! Thanks.

[pds]

"False, pds."

Reading comprehension isn't your forte.

First, the Federal Circuit wrote: "there may be a centuries-old alchemy textbook that, while not describing any metal alloys, describes a method that, if practiced precisely, actually produces the claimed alloy"

As such, the alloy wasn't described (i.e., the result), just the method.

Also, I wrote "The hypo used by the Fed. Cir. and myself stated that the RESULT of the method described in the prior art anticipated the claimed alloy."

Note the singular use of "hypo," which meant that I was referring to the same hypo used by the Fed. Cir. and myself (i.e., the metal alloy hypo and not the beer hypo).

[pds]

"The goalpost store called. They want to hire you immediately to help in their warehouse."

You seem to be confused as to the role of a hypothetical. Your professors at college must have found you as annoying as the rest of us here.

[pds]

"Wrong. If the prior art is enabled for the recited range range, it anticipates the composition. End of analysis."
Yet again, MM evidences his ignorance of the law. I suggest you read:
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2131_03.htm#sect2131.03
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2144_05.htm

These sections discuss, respectively, the anticipation and obviousness of ranges. Here is an example that seems right on point:

In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broad range, depending on the other facts of the case, it may be reasonable to conclude that the narrow range is not disclosed with "sufficient specificity" to constitute an anticipation of the claims. See, e.g., Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006) wherein the court held that a reference temperature range of 100-500 degrees C did not describe the claimed range of 330-450 degrees C with sufficient specificity to be anticipatory. Further, while there was a slight overlap between the reference's preferred range (150-350 degrees C) and the claimed range, that overlap was not sufficient for anticipation. "[T]he disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Id. at 1000, 78 USPQ2d at 1424. Any evidence of unexpected results within the narrow range may also render the claims unobvious.

[CJ]

Astacus, I basically agree with you on the prior art status. MaxDrei's approach is however interesting at least to give a different view on novelty.

[pds]

"You're a prosecutor. You recieve back a rejection in the form of a 102, yet, you can plainly see that 103 does not apply (as per this type of holding). You already have "non-obvious" limitations in the claim, so you don't need to worry about getting hit with a 103 when you o so slightly amend around the 102. In other words, you don't have to concern yourself about whether or not the limitation you are adding is a mickey mouse limitation, anything to get around the 102 is A OK"

6K nailed it (some hope for him yet) … a reference, although a slam dunk 102 (but not a 103) can easily be amended around. Thus, a finding that the claims are anticipated, but not obvious in view of a particular reference can be very useful during prosecution.

[groveboy1]

The majority of the panel clearly got this one right. I am surprised that no one on this thread has focused on the key distinction at work here. As per the Federal Circuit's 2003 Geneva decision, prior art can inherently anticipate an alleged invention even where a POSITA would not have recognized that the invention was inherently in the prior art--i.e., there is no RECOGNITION requirement for the doctrine of anticipation to render a patent invalid. As per KSR, obviousness necessarily involves a requirement of recognition--i.e., faced with market demand and the problem addressed by the alleged invention, a POSITA would have recognized a solution to the problem applying ordinary innovation. In sum--there is a recognition requirement in an obviousness analysis, but no such requirement exists in an anticipation analysis.

[MaxDrei]

Thanks pds for raising up for discussion the category "selection invention" ie claiming a small part of an old range, because you think it's an inventive selection.

But first you have to get a claim that's novel.

The novelty test in the EPO for a selected range could be captured in two words as "seriously contemplate". As likely to operate outside the claimed range as within it, won't get your novelty attack home. Would the PHOSITA reading the old reference seriously contemplate operating in the claimed range. The closer the claimed range is, to the middle of the prior art range, might be an indicator. Another might be how far the claimed range is away from the prior art worked Examples. Another might be how small the span of the claimed range is, relative to the full length of the prior art range. Any thoughts from MM?

[MaxDrei]

Grove, I thought we were here discussing how something already found obvious can nevertheless be novel. But you're the other way around, aren't you?

[MaxDrei]

OOPS. Who's confused now. Sorry about that, Groveboy.

[Astacus]

The patentability of subranges is a very well walked path in the EPO, as Max points out.

PDS has highlighted a clear divergence in US/EP jurisprudence:

"[T]he disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Id. at 1000, 78 USPQ2d at 1424.

In Europe, the disclosure of a range actually specifically discloses ONLY the end points. Thus a temp range of 50 to 100 is anticipated by a range of 80 to 110.

Other than that it seems that, although the wording differs, the sentiment does not.

In order to be patentable a subrange in EP must be:

narrow wrt to prior art
sufficiently far removed from the ends
be a purposive selection (ie not just a random land grab)

in case you are intersted that is goverened by decision 279 of 1989

[Astacus]

Sorry, I digressed there didn't I?

[Just an ordinary inventor(TM)]

Not that this directly relates to the primary thoughts here, but,

Some inventions may indeed be obvious; however, some problems are not obvious.

The point is this: If a problem is non-obvious but its solution is obvious, then that obvious solution should be, and it is, patentable!

[Zalk]

I do not find this case to be in the least remarkable. Commonly, the literal language of a claim inadvertantly encompasses prior art devoted to an entirely different problem or application. Such prior art may be useless for purposes of developing an obviousness argument but still present problems of anticipation. With that in mind I, and I am sure many others, sometimes draft dependant claims with limitations that are obvious within the inventor's field of use but nevertheless may prove useful in distinguishing "accidental" or "inadvertant" prior art.

[Malcolm Mooney]

pds "In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent."

Yes, pds, and that's why I went out of my way to mention that the prior art was enabled for the recited range. You're always looking for a fight, aren't you?

[Malcolm Mooney]

There remains much apples vs. oranges in this dicussion. The issue raised by Linn's crappy hypothetical is not whether references exist that are poor choices for combining in an obviousness analysis but which nevertheless could anticipate.

The issue raised by Linn's crappy hypo is: if a reference does IN FACT anticipate, does it also render the claims obvious? The answer has to be yes and Linn is simply wrong. Has Linn's dicta disemboweled the longstanding position that "anticipation is the epitome is obviousness"? It would appear to do that.

The actual facts of this case raise a different issue, however: if a jury has examined a set of prior art publications and found a claim non-obvious over those publications, can one of those publications nevertheless anticipate the claim? The answer is YES but *only* if the jury (or the attorneys presenting the argument to the jury) did a crappy job of characterizing the publications in the first place, i.e., if for some bizarre reason they failed to recognize the prior art reference for all that it taught.

Again: this is an incredibly stoopit case.

[Malcolm Mooney]

CJ "questions from Korea:
1. U.S. patent guys like to discuss at 2, 3 am?"

We never sleep. That is why our economy is so strong, my friends.

/flag-waving idiocy off

[distinction]

The point is this: If a problem is non-obvious but its solution is obvious, then that obvious solution should be, and it is, patentable!
Posted by: Just an ordinary inventor(TM) | Oct 13, 2008 at 12:09 PM

JAOI, your statement is not completely correct. I think it would depend on the claim. For example, if the solution is an old product, I think you could get a claim on "a method of solving the problem, comprising using the old product." However, you could not get a claim on "the old product."

[patent.drafter]

"However, D is a functional limitation of A and is the point of novelty of the claim."

MPEP 2114 - >While features of an apparatus may be recited either structurally or functionally, claimsanIn re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board's finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);< In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

[patent.drafter]

"However, D is a functional limitation of A and is the point of novelty of the claim."

MPEP 2114 - >While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. n re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) ... "[A]pparatus claims cover what a device _is_, not what a device _does_." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).

[pds]

"Yes, pds, and that's why I went out of my way to mention that the prior art was enabled for the recited range."

"Wrong. If the prior art is enabled for the recited range range, it anticipates the composition. End of analysis."

The hypothetical was: "the prior art discloses a catalyst composition which comprises between 5 and 95 wt% palladium. Applicant claims a catalyst composition comprising between 13.5 and 14.5 wt% palladium."

Based upon the hypothetical given, the new range was not enabled by the prior art. If you are going to change the hypothetical, make it clear that you are doing so. By making your first statement "Wrong," you are implying that the hypothetical, as given, is wrong, which it is not.

[pds]

"if a reference does IN FACT anticipate, does it also render the claims obvious? The answer has to be yes and Linn is simply wrong."

If that were true, then the jurisprudence as to non-analogous prior art, indicia of non-obviousness, teaching away, and any other arguments that could be used to remove a reference as prior art (under an obviousness analysis) must be figments of our collective imagination.

Go ahead and tell your client that they shouldn't be making these arguments when faced with a 103 rejecton from the USPTO (ooops ... I forget, since you don't prosecute, you don't need to). As for me, I'll still be using these arguments to remove references, which could be applied under 102, from being applied in an obviousness rejection.

[pds]

"[A]pparatus claims cover what a device _is_, not what a device _does_."

Form follows function.

[Malcolm Mooney]

"Based upon the hypothetical given, the new range was not enabled by the prior art."

LOL. Yes, that was really clear from the hypo. Time for your nap, pds.

[Just an ordinary inventor(TM)]

Dear distinction,

Thank you for the distinction. Yes, of course, you are right.

[Follow Up]

JAOI: Have you figured out whether, since the Constitution merely discusses an exclusive right and not money damages, it's unconstitutional for Congress to give inventors the right to collect money damages for past infringement?

[Just an ordinary inventor(TM)]

Hi Follow up,

Very funny, good one. As long as you keep that sense of humor, you’re ok in my book.

[pds]

"LOL. Yes, that was really clear from the hypo."

Yes ... it was pretty clear. The hypo gave a huge range for the prior art (i.e., 5%-95%) and a very narrow range for the claim (i.e., 13.5%-14.5%). If the narrow range was enabled, it would have be discussed in the prior art (and thus described in the hypo).

I cannot help it if you read into the hypo more than was actually there.

[Follow Up]

The money damages question is important to your argument because it addresses a key issue: whether Congress must provide an all-or-nothing remedy, that is, can Congress provide for money damages and a less-than-automatic injunction or must Congress only provide for an automatic injunction. Your argument apparently assumes that, if Congress acts, it must provide the automatic injunction.

[Follow Up]

In other words, JAOI, it's inconsistent (if not hypocritical) to argue for a broad interpretation of the Constitution to allow Congress the authority to pass laws that permit money damages and yet argue for a narrow interpretation that says Congress must pass laws that require automatic injunctions. Either "exclusive right" has a narrow interpretation or a broad one, but not both.

[Just an ordinary white rabbit(TM)]

Dear Follow up,

Please allow my boss to refrain from responding today. He is overwhelmed by other factors, e.g., cellebrating our financial rebound today (so he can keep me in spiked carrots), and the stupidness of some other comments remarkable similar to your comment.

[Follow Up]

I'll take it that you and your white rabbit would rather live in a Constitutional Wonderland, where the Constitutional power grant to the Congress is so rigid that less-than-automatic injunctions are not permitted, but somehow flexible enough to permit money damages.

[Malcolm Mooney]

MM ->"if a reference does IN FACT anticipate, does it also render the claims obvious? The answer has to be yes and Linn is simply wrong."

pds "If that were true, then the jurisprudence as to non-analogous prior art, indicia of non-obviousness, teaching away, and any other arguments that could be used to remove a reference as prior art (under an obviousness analysis) must be figments of our collective imagination."

Wrong, pds. And your (and Linn's) essential misunderstanding is right there in front of you should you wish to see the light. I noted this already upthread: if a piece of prior art does ****IN FACT**** anticipate then (1) teaching away doesn't remove the prior art; (2) indicia of non-obvious does not remove the prior art; and (3) the art is analogous art *per se* because it reads on the claimed invention.

The jurisprudence you refer to still exists. It is just impossible to properly work that jurisprudence to remove the prior art. Do you understand? Let me put it this way: THE PRIOR ART REFERENCE TEACHES EVERY ELEMENT IN THE CLAIM. If that doesn't render an invention "obvious", then nothing does. That is what the phrase "anticipation is the epitome of obviousness" means.

[The Man Who Watches]

"And, that a patent may be found anticipated yet nonobvious." WRONG!!!!!!! See Hotchkiss v. Greenwood . . . it all started there. It is like this industry constantly has to relearn. WRONG, WRONG, WRONG, WRONG. That is the only way to explain it. You can see Graham v. Deere if you like. That statement is the same as saying 3 is greater than 4. It completely ignores Venn mathematics which is the model of analysis followed for determining the patentability of combination patents.

[AllSeeingEye]

Real prosecutors know that under 102, the prior art discloses, under 103 it teaches or suggests. And there is no such thing as a validity opinion.

[The Man Who Watches]

Aparrently the same theories of logic that have guided the Executive Branch of government these past 8 years have seemed to catch hold in the Article III branch of government. The Judge's assertion

“While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation. The tests for anticipation and obviousness are different."

Completely defies the logic I learned or must be premised upon some similar model of logic we see guided the executive policies toward investment banks and regulation in general.

God help this great country if this type of analysis permeates all fabric of our society.

[AllSeeingEye]

...and data is pronounced "day-tah"

[TheManWhoWatches]

If this logic holds true, then every claimed range case that includes a lesser included range with superior results is invalid. Chew on that for a while and you can see how this analysis will wipe out tens of thousands of patents issued in the semiconductor art.

[AllSeeingEye]

watching man, someone up-thread already picked up on the lesser included range issue. Let go of your pearls, this case won't wipe out anything - not even the moon walk. All it essentially says is that notwithstanding a finding of anticipation, the question of obviousness can go to the jury.

[Just an ordinary inventor(TM)]

Dear Follow up,

Please read this:

Article I, §8, Clause 8 of our Constitution:
“The Congress shall have Power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

It does itemize “exclusive Right” and it leaves the rest to Congress.

Perhaps I am missing your point. Please explain.

[AllSeeingEye]

Money damages are appropriate for past damages, since they clearly cannot be enjoined. However, as most recognize, the teeth of the "exclusive" part of "exclusive right" is the power of the injunction. Anything less is rationalization.

You sound like a reasonable man, how about we give you a few "money damages" bucks for the government, out of the blue, to allow a private company to set up a natural gas drilling operation in your front yard. Heck, we'd even give you fair market value for your house, e.g. 10% below last year's tax assessment.

I'm guessing you would quickly be wishing for the power of the injunction.

[Malcolm Mooney]

ASE: "All it essentially says is that notwithstanding a finding of anticipation, the question of obviousness can go to the jury."

*Sigh*

The case says the exact opposite: "While it is commonly understood that prior art references that anticipate a claim will usually render that claim obvious, it is not necessarily true that a verdict of nonobviousness forecloses anticipation."

As someone noted upthread, Lord Crouch's summary falls short of his usually exemplary standards. Check out http://www.patenthawk.com/blog/2008/10/anticipation_without_obviousne.html#more for a somewhat more lucid analysis.

[Just an ordinary white rabbit(TM)]

Dear Follow Up.

My boss said,

"Perhaps I am missing your point. Please explain."

If he is missing your point, maybe he is an asswhole, but if not, maybe it is not him whom is an asswhole.

So, who is? I'm waiting with big ears and baited carrot breath to hear.

[Malcolm Mooney]

JOWR "I'm waiting with big ears and baited carrot breath to he"

Let me guess: you work for Hugh Hefner and that's not a carrot.

[AllSeeingEye]

excuse me, by "anticipation" I meant non-obviousness, and by "obvious" I meant "anticpation" and by "moon walk" I meant "big furry rabbit" aka "you're not here for the carrots are you..."

[Follow Up]

"It does itemize “exclusive Right” and it leaves the rest to Congress. Perhaps I am missing your point. Please explain."

Actually, it "itemizes exclusive right" and doesn't leave anything else to congress. So how do you imply the ability to grant damages?

[Follow Up]

... let me answer my own question, you infer the ability to award damages as a power of the inventor's "exclusive right," on the basis that the "exclusive right" is not synonmous with an injunction. If the exclusive right is not synomous with an injunction, it's not mandatory.

[Follow Up]

If it's your position that "exclusive right" means an injunction, then money damages isn't in that definition and Congress lacks the power to award damages.

[GP]

what a bizarre thread.

For DC, who wrote, approximately, that disclosure of a broad range anticipates a narrow range, that is untrue.

Alloy with 5-90% Compound Z is the prior art.

Claim is
Alloy with 40-60% Compound Z.

Element of 40-60 not taught. Not anticipated.

Everybody else, try this language:

Anticipated - This means that somebody invented it already.

How does anybody with a reg number allow themselves to be so bent with Legal tortures that he/she actually makes an argument that goes . . .

"Well, if somebody already invented your invention and published that in Document Q here, you inventing the same thing again would not be obvious because . . . "

Stop yourself.

Seriously.

Think about what "anticipation" means. Forget about 102 and case law.

Anticipated - Somebody already invented it.

Are you really trying to convince yourself that inventing something that somebody already invented would not be obvious?

If it's anticipated, then it's obvious. EOS.

[Just an ordinary white rabbit(TM)]

Yo Follow Up,

Let me help you. I think you hit on something – why do we need Congress for anything, they are Just a bunch of crooks. Let’s go to a two branch government, is that what you mean?

[e6k]

Follow up, I tried to explain that to him the other day. He will not be disuaded.

[barney frankie chris dodd et al]

e6ok,

thank you for your support. please explain it as best you can. we need a little relief from the home front.

[Follow Up]

OK, JAOI/WB

Let's assume that, under Article I, §8, Clause 8 of our Constitution, Congress is given (1) the explicit power to pass laws that allow inventors to obtain an automatic injunction and (2) the implicit power to allow inventors to obtain other related remedies (in your words "everything else").

Let's also assume that Congress opted not to exercise the first power and, instead, under the second power granted money damages and an optional injunction, subject to the court's discretion under traditional principles of equity. Is it unconstitutional for Congress choosing not to exercise the first power and, instead, opting to exercise the second power? Before you answer that question, consider the president choosing not to exercise his veto power? Is that unconstitutional?

There is no constitutional mandate for an automatic injunction, although I believe Congress could enact laws that mandated such. So why don't you stop fruitlessly arguing about Constitutionality and start arguing that, in view of eBay, Congress needs to put the teeth back into inventors' rights?