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Novelty §102 Outline

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This is an extract of our Novelty §102 document, which we sell as part of our Patent Law Outlines collection written by the top tier of Harvard Law School students.

The following is a more accessble plain text extract of the PDF sample above, taken from our Patent Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:

SS 102 Novelty Introduction
? Robertson (Fed Cir 1999) o Legal standard: Each and every element in the questionable claim has to be included (expressly or inherently) in the prior art.
? If more than one prior art reference, then it's OBVIOUSNESS not NOVELTY - different test.
? In re Schreiber o Invention: Cone on top of popcorn to dispense o Prior Art: Funnel top of oil can. o Different function not sufficient to distinguish prior art for novelty analysis o "If it would infringe later, it anticipates before" o OUTCOME: Patent is invalid; has been anticipated Derivation
? Campbell: o o

Presumption of validity - creates burden of clear and convincing evidence that patent is invalid on the challenger. Need evidence beyond testimony ? in this case we have the photo of the belt buckle which he claim served as inspiration. Court buys it.

2/20 Inherent Anticipation????

Two different versions of inherent anticipation. o Seaborg: If not getting any benefit from it before, it doesn't really count. Trace, undetectable amounts doesn't count as anticipation. o SKB: If it existed before then that's it, trace amounts OK -- not new. Tangent: Very few defenses in patent law...
SKB is essentially the law, though Seaborg isn't bad law but just ignored. Rule: Patent invalidated even if prior art reference does not explicitly satisfy the all elements rule, so long as it inherently includes the claimed invention In order for prior art to anticipate, all the elements have to be in one prior art reference. Prior art reference must be enabling o BUT only with respect to the making of the invention. o Must be sufficient for PSA to make the invention without undue experimentation. o Does NOT apply to the use or utility parts of the enablement requirement. (Hafner) Not need to have a disclosure of utility to disclose the making of the invention, and that's enough to anticipate. (Sprouts case we didn't talk about: file a patent on harvesting sprouts at a particular time that can fight cancer. Patent rejected because people had harvested at that time. "But they didn't know about that use!" - we don't care.)

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