ANTICIPATION BY INHERENCY IN PRIOR ART课件.ppt

 Non-functional printed matter does not distinguish claimed product from otherwise identical prior art product to obviate anticipation Where the only difference between a prior art product and a claimed product is printed matter (i.e. instructions), which is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai 70 USPQ2d 1862 (CAFC 2004) and In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983). 精品文档 Product-by-process claims not limited to the manipulations of the recited steps , only the structure implied by the steps Determination of the patentability of a product-by-process claim is based on the identity of the product, not its method of production. If the product in the product-by-process claim is the same (or obvious) from a product of the prior art, the claim is unpatentable, even if the product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). When assessing patentability, the product-by-process claim has potential patentability when the manufacturing steps impart identifiable, distinctive structural characteristic to the final product. 精品文档 Anticipation by Inherency PROCESS CLAIMSClaims Anticipated when a Device carries out Process A Prior art device may anticipate a claimed process if the device carries out the process during normal operation. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). 精品文档 The requirements are clear. Anticipation is a fact based determination. Whether expressly or inherently disclosed, the limitations must be specifically identifiable and/or necessarily present. 1. Patents submitted to show what is in the public’s possession 2. Evidence used to explain