Patent It Yourself - PDF Archive

106 | Patent it YOURSELF
e. Summary of Prior Art
If these prior-art rules seem complicated and difficult to
understand, you’re not alone. Very few patent attorneys
understand them fully either! Perhaps Congress will
simplify Section 102 someday and enact a “first to file” law,
like the rest of the world uses. (Write to your Congressperson!)
In the meantime, don’t worry about it if you can’t
understand all of the rules. All you really need to remember
is that relevant prior art usually consists of:
• any published writing (including any patent) that was
made publicly available either (1) before your earliest
provable date of invention (see above), or (2) over one
year before you can get your patent application on file
• any U.S. patent whose issue date isn’t early enough to
stop you but that has a filing or PPA date earlier than
your earliest provable date of invention
• any relevant invention or development (whether
described in writing or not) existing prior to the date
your invention was conceived, or
• any public or commercial use, sale, or knowledge
of the invention more than one year prior to your
application filing date.
2. Any Physical or Method Step
Difference Whatever Will Satisfy
the Novelty Requirement
Any novel feature, no matter how trivial, will satisfy the
novelty requirement. For example, suppose you’ve “invented”
a bicycle that is painted yellow with green polka dots, each
of which has a blue triangle in the center. Assume (this is
easy to do) that no bicycle has been painted this way before.
Your bicycle would thus clearly satisfy the requirement of
novelty.
Rarely will an investigation into your invention’s
patentability (called a “patentability search”) reveal any
single prior invention or reference that could be considered
a dead ringer. Of course, if your search does produce a
dead-ringer reference for your invention—that is, an actual
device or published description showing all the features
of your invention and operating in the same way for the
same purpose—obviously your patentability decision can
be made immediately. Your invention lacks novelty over the
“prior art.” Another way of saying this is that your invention
has been “anticipated” by a prior invention or conception
and is thus definitely unpatentable. The concepts of
anticipation and prior art are discussed in more detail in
Requirement #4—unobviousness.
The law generally recognizes three types of novelty, any
one of which will satisfy the novelty requirement of Section
102: (1) physical (hardware or method) difference, (2) new
combination, and (3) new use.
a. Physical Differences
This is the most common way to satisfy the novelty requirement.
Here your invention has some physical or structural
(hardware or method) difference over the prior art. If the
invention is a machine, composition, or article, it must be
or have one or more parts that have a different shape, value,
size, color, or composition than what’s already known.
It’s often difficult for inventors to distinguish between
a physical difference and a new result. When I ask clients,
“What’s physically different about your invention?” they
usually reply that theirs is lighter, faster, safer, cheaper to
make or use, portable, and so on. However, these factors
are new results or advantages, not physical or method step
differences, and are primarily relevant to unobviousness
(see Section F), not to novelty. That is, they won’t help your
invention satisfy the novelty requirement. Again, a new
physical feature must be a hardware (including operational)
difference—for example, a part with a different shape, a
different material, a different size, a different arrangement
of the components, etc.
Even omitting an element can be considered novel. For
example, if a machine has always had four gears, and you
find that it will work with three, you’ve satisfied the novelty
requirement.
Also, the discovery of a critical area of a given priorart
range will be considered novel. That is, if a prior-art
magazine article on dyeing states that a mordant will work
at a temperature range of 100–150 degrees centigrade and
you discover that it works five times better at 127–130
degrees centigrade, the law still considers this range novel,
even though it’s technically embraced by the prior art.
A physical difference can also be subtle or less apparent
in the hardware sense, so that it’s manifested primarily by
a different mode of operation. Here are some examples: (a)
an electronic amplifying circuit that looks the same, but
that operates in a different mode—say Class A rather than
Class B; (b) a circuit that is the same physically but is under
the control of different software; (c) a pump that looks the
same, but that operates at a higher pressure and hence in a
different mode; and (d) a chemical reaction that takes place
at a substantially different temperature or pressure. All of
these will be considered novel, even though they appear the
same to the eye.
NoTe
Processes Note. If your invention is a new process,
you don’t need any novel hardware; your physical novelty is