Chapter four introduces the concepts of anticipation by prior art and loss of right, which are both defined in 35 U.S.C. § 102. Although § 102 may seem complex at first glance, each of its sub-sections may be considered separately when analyzing a problem. By carefully stepping through the who, what, when, and where of § 102, any problem can be made manageable. Understanding the prior art identified by the § 102 analysis is vital even if no anticipation or loss of right is found. As you will see in chapter five, much of the same prior art is used to conduct the obviousness analysis of § 103.
The Sixth Edition covers both the pre-AIA version of § 102 and the current version, now in force. Because the old version will still apply to hundreds of thousands of patents and patent applications filed before that part of the AIA became effective, we encourage professors and students to cover both versions in detail.
Note the Reexamination Certificate at the end of the Paulsen ‘456 patent and the Notice of Adverse Decisions in Interference at the end of the Dynamic Sciences Limited ‘662 patent, which show the final outcomes of their respective cases.
Additional Source Material
- See 35 U.S.C. § 102 and MPEP §§ 2121–2138.06
- Egbert v. Lippman, 104 U.S. 333 (1882)
- Lough v. Brunswick, 56 86 F.3d 1113 (Fed. Cir.1996)
- Pfaff v. Wells Electronics, 525 U.S. 55 (1998)
- Lorenz v. Colgate-Palmolive-Peet, 167 F.2d 423 (3d Cir.1948)
- Baxter International v. COBE Laboratories, 88 F.3d 1054 (Fed. Cir.1996)
- In re Kathawala, 9 F.3d 942 (Fed. Cir.1993)
- Mahurkar v. C.R.Bard, 79 F.3d 1572 (Fed. Cir. 1996)
- In re Paulsen, 30 F.3d 1475 (Fed.Cir.1994)
- Rosaire v. Baroid Sales Division, 218 F.2d 72 (5th Cir.1955)
- Thomson v. Quixote, 166 F.3d 1172 (Fed. Cir.1999)
- In re Hilmer (Hilmer I), 359 F.2d 859 (CCPA 1966)
- In re Hilmer (Hilmer II), 424 F.2d 1108 (CCPA 1970)
- See materials for Hilmer I
- Gambro Lundia v. Baxter Healthcare, 110 F.3d 1573 (Fed. Cir.1997)
- Burroughs Wellcome v. Barr Laboratories, 40 F.3d 1223 (Fed. Cir.1994)
- Dynamic Sciences Limited v. Union Switch & Signal, 928 F.2d 1122 (Fed. Cir.1991)