Prior art

Other examples of prior events or prior art which may destroy novelty are as follows ... 

Other concerns which may necessitate a review of a patent after issuance include the discovery of prior art which was not uncovered during the examination of the patent appHcation. A deterrnination should be made as to whether or not the claims in the issued patent are too broad when viewed in light of this prior art. It may also be the case that someone who participated in the examination of the patent appHcation discovered prior patents, Hterature, or activities which they knew of but did not cite to the patent examiner. In such an instance, this prior art must also be reviewed in light of the patent claims to determine whether the claims are too broad. 

If, upon review of the patent, the patentee discovers that the claims contain a formal error, are too narrow, or are too broad in view of the prior art, the patentee may ask the U.S. PTO to correct this error. There are four administrative vehicles for correcting errors in issued patents. The appHcation of each of these mechanisms is dependent on the nature and severity of the error, as weU as the source of its creation. 

A reissue may be ordered to correct any minor or major mistake which occurred during prosecution of a patent, but the mistake must be one that makes the patent partially or whoUy inoperable. Inoperable essentially means that the patent caimot be enforced. For instance, a reissue proceeding can be used to correct inventorship or even broaden claims if the patent is less than two years old. However, such a request to broaden claims in the context of reissue may not be undertaken to recover subject matter canceled during examination. Further, a reissue proceeding may be undertaken to correct formal problems or address newly discovered prior art which affects the scope of the claims. The nature of a reissue proceeding directs that this mechanism should be used only when the vaUdity of the patent is in question owing to the error or problem in question. 

In addition to utiHty patents, some countries pubHsh patent documents under different or less stringent standards for patentabiHty and with shorter patent terms. For example, plant patents cover asexually reproduced plants. Design patents cover the decorative aspects of a product. UtiHty models and petty patents cover products with differences from the prior art that need not meet the nonobviousness standards set for utiHty patents. 

The bulk of the patent specification is the disclosure, the text and illustrations that describe the claimed invention in detail and explain how the claimed invention differs from the prior art. Modem patent disclosures contain a summary of the claimed invention, a description of the background of the invention, a general description of the way in which the invention is made and used, specific examples, and, where appHcable, drawings of the invention in general or specific embodiments. The technical information provided in a patent specification may be used without infringing the patent only practicing the invention defined in the claims within the term and territory of the patent grant is forbidden. Because much of the information in patent specifications is never pubHshed in refereed journals or other nonpatent media, patent disclosures are an invaluable part of the technical Hterature. 

A new initiative introduced by Derwent during 1995 is the Patents Citation Index, an on-line database of patent citations that includes both examiners citations and patentees citations to prior art from patent specifications. When given a known invention of interest, as represented by a patent family, the database can identify any patent against which it has been cited, as well as eadier patents cited by any member of that family. Limited citation... 

At least three types of citations in patents can be identified inventors citations found in the patent specification, examiners citations found on issued U.S. patents, and examiners citations found on pubHshed appHcations and granted patents from other countries. A patent inventor cites prior art in order to distance the invention from that art, rather than to show a close relationship. Whereas scientific researchers may want to show how closely they have built on what went before, for an inventor that can suggest anticipation or at least obviousness. Thus, citations within a patent typicaHy try to demonstrate the inadequacies of prior inventions and the uniqueness of the patentee s own work. References tied by this type of citation can be usefiil in developing a picture of the state of the art, but often show sharply differing technologies. 

Prior art methods for making the starting material, HSCH2CONHC6H5 ate disclosed in an article by Beckurts et al. in Journ, Praktische Chemie (2) 66 p. 174, and in the literature referred to in the mentioned article. 

Litigation in the plastic and other industries usually involves patent infringement, theft of trade secret, product liability, or a specific performance. With the usual patent law, the expert is expected to report on the obviousness of an invention. Prior art and knowledge of the requirements for patentability will often be key parts of the expert s... 

They claim that in substantially all of the prior art processes, the operation is really a modified batch process in that high hold-up vessel-type nitrators are employed. Moreover, extensive circulation, recirculation, and a relatively long residence time of the reaction mixt in the nitrating zone are characteristics of a majority of the previously proposed methods, and such features are inherently undesirable because they favor degradative side reactions, which occur at all stages of the nitration of toluene to trinitrotoluene, and particularly in the final stage. ... 

The second-stage nitration reaction is somewhat slower than first-stage nitration, but is nevertheless quite rapid in comparison to prior art methods, being substantially complete within a matter of from about two to six minutes under the preferred conditions of the invention, and seldom, if ever, requiring longer than about 12 to 15 minutes ... 

The proplnts described above are in the realm of prior art and depict those NC proplnts with low smoke potential that are used primarily as gun proplnts. Recent research and development work has been concentrated on creating both gun proplnts and rocket proplnts with reduced smoke output in order to foil countermeasures. Lavitt (Ref 76) found that the concurrent use of optimum proportions of lead stearate and sodium barbiturate in double-base proplnts resulted in a marked reduction in smoke output. This was attributed to the synergistic interaction of the two salts to produce more complete oxidation of the exhaust products. The importance of using the optimum ratio of the two catalysts is demonstrated by the higher smoke values shown in Table 4 for Propellants 105, 106 and 107, when compared to other... 

The crude product from the above reaction mixt was fractionated into a distilled product (bp 200°/0.3 Torr) with an average molecular weight of 514 and a residue with an average molecular weight of 940. These were evaluated as catalysts and compared to prior art ferrocenes in a standard carboxy-terminated polybutadiene formula cured with MAPO. The results are shown in Table 31... 

A significant volume of literature relates to our work. Concerning choice of support, Montassier et al. have examined silica-supported catalysts with Pt, Co, Rh Ru and Ir catalysts.However, these systems are not stable to hydrothermal conditions. Carbon offers a stable support option. However, the prior art with respect to carbon-supported catalysts has generally focused on Ru and Pt as metals.Additionally, unsupported catalysts have also been reported effective including Raney metals (metal sponges).Although the bulk of the literature is based on mono-metallic systems, Maris et al. recently reported on bimetallic carbon-supported catalysts with Pt/Ru and Au/Ru. In contrast, our work focuses primarily on the development of a class of rhenium-based carbon supported catalysts that have demonstrated performance equal to or better than much of the prior art. A proposed reaction mechartism is shown in Figure 34.2 °l... 

The search for new intellectual property often involves increasing size of existing prior art compounds, especially in me-too, me-better, and highly competitive projects [21]... 

Analysis This case presents an example where superior and unexpected results associated with a molecule (one enantiomer) conveyed patentability to the enantiomer over its previously disclosed (prior art) racemate. The case also introduces another mechanism through which patents can be defeated by demonstrating that the claimed subject matter is obvious. 

One of the requirements for obtaining a patent is that the claimed subject matter in the patent not be obvious in view of prior art (previously disclosed patents and publications). Obviousness [16] and prior art [17] are legally codified in Title 35 of the United States Code. 

A prior art Sanofi patent disclosed the racemate that the dextrorotatory enantiomer found in Plavix was separated from. 

The prior art Sanofi patent made statements concerning enantiomers and addition salts. 

Concerning the bisulfate salt, Sanofi presented evidence that "the prior art taught away from the use of sulfuric acid with the claimed enantiomer, for strong acids could encourage re-racemization [23]." "Teaching away" from, a separate secondary consideration trending toward patentability, is discussed in more detail in Section 7 of this chapter. 

Often, the biggest obstacle to obtaining a patent is a company s own prior art. Thoughtful consideration as to the content and timing of disclosures can remove or minimize self-created obstacles to obtaining patent protection. Discuss the content of proposed patent applications and publications with your patent professional. 

Case History Takeda, in an attempt to protect Actos from generic competition, sued various generic pharmaceutical manufacturers (collectively Alphapharm) for infringing the claims of U.S. Patent No. 4,687,777 ( 777). At trial, Alphapharm asserted that the compounds covered by the claims of the 777 patent were obvious in view of a prior art compound. The district court found the compounds covered by the claims of the 777... 

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