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Patent Law at M. Carvalho
At present, as opposed to the recent past, (1) Nanotechnology can challenge patent practitioners to meet the task of showing novelty, a statutory requirement for patentability under 35 U.S.C. §102 (anticipation). (2) The challenge grows as Nanotechnology's focus on inventive aspects further reduces the size of a previous nanometer scale product and the novelty arises from this change in size. A change in size of this nature will not alone be novel if only the patent claim language covers the same physical structure of the previous invention. In this case, the previous invention may be used as prior art to defeat a patent application claim based on anticipation. (3) So, how does one successfully assert a patent claim directed solely to the physical structure? Opinions from the Board of Patent Appeals and Interferences (Board) have provided some helpful insight.
May 30th, 2008
Patent Claiming Nanotech Products Only By Its Physical Structure.
This article analyses one such patent application as a leading example. Khan (4) recently appealed to the Board from an Office rejection on the grounds of anticipation and lost. Khan cut down Molybdenum Oxide (MoO3) to smaller sizes than the nano-size previously known and it claimed MoO3 nanoparticles solely by the actual physical structure. In that instance, the terminology used was different from that used to describe the previous invention.
Here, I analyze the case and discuss possible arguments which could have been made in view of the Board's opinion. The key points to take-home from the Board's decision are that the patent practitioner must in advance (1) construe the prior art claims, (2) lay down all the possible definitions of crucial terms and (3) carefully select Figures.
Anticipation is all about an identical invention with the same detail as in the presently claimed invention. (5) The prior art may anticipate a claimed invention either expressly or inherently. (6) To establish anticipation, a single prior art item must contain all essential elements of a claim and the elements must be arranged as in the claim. (7) Anticipation is established where the prior art lists at least a single embodiment falling within the claim. (8) Also, it is irrelevant if either the prior art or the later invention contains additional elements. (9) However, absence of an essential element, or even a difference in the claim from the prior art, negates anticipation. (10) Regarding ranges, prior art which claims any value within a claimed range is an anticipation of the claimed range. (11) Accordingly, non-overlapping but very close ranges are not anticipatory.
Anticipation analysis is a two step process: (1) claim construction, and (2) a comparison of the construed claim to the prior art. (12) Disputed term claims are interpreted in view of the Specification and their plain and ordinary meaning. (13) Because the Specification acts as a glossary, the patent applicant can eliminate terminological uncertainty by acting as his or her own lexicographer. (14) The lexicographer can redefine his terminology in terms away from their ordinary meaning, as long as he is clear about that intent. (15) This device particularly applies to Nanotechnology which is rapidly evolving and is particularly useful because measurement standards are created with the development of the technology. (16)
As a matter of patent practice, in distinguishing the invention over prior art to satisfy the Examiner, applicants should make arguments only. Responding by "amendment" should be the last resort. The reason is that arguments or amendments must be made carefully to avoid prosecution history estoppel in view of Festo; (17) which could strip the patentee's freedom to use the doctrine of equivalents later at trial. However, the standard to invoke argument-based estoppel is that the prosecution history "must evince a clear and unmistakable surrender of subject matter." (18)
Ex-parte Khan et al (01/30/2008).
The Board upheld a 102 (b) rejection on an application related to a molybdenum oxide nanoparticle by finding that the claimed invention already existed --- just by another name. (19)
The U.S. patent application Ser. No. 10/222,656, filed on Aug. 16, 2002, which in turn is a divisional of U.S. Pat. No. 6,468,497 B1, relates to molybdenum nano-particle technology. MoO3 is a metal which arouse interest for numerous applications such as in electrochemical capacitors, plastics, nano-wire, nano-fiber, coatings, textiles and potentially in medicine. (20)
According to the written description of the patent application "each individual particle of the nano-particle material…comprises a generally cylindrically shaped, rod-like configuration having a mean length that is greater than the mean diameter." It further disclosed that "[w]hile the size of the nano-particle material….can be expressed in terms of the mean length or the mean diameter of the particles (e.g., as imaged by transmission electron microscopy), it is generally more useful to express the size of the nano-particle material… in terms of surface area per unit weight…In the embodiment shown and described herein, the method and apparatus of the present invention has produced nano-particle material having sizes in the range of about 4-44 square meters/gram (m2/g) (15-35 m2/g preferred) as measured in accordance with BET analysis." Further, the dependent claim 4 limited the nano-particles to have "blunt ends," and claims 1 and 5 described it as "non-hollow." (21) The nanoparticles were depicted by Transmission Electron Microscopy (TEM) micrograph.
During examination, the Examiner found the Mestl reference (1995) describing nanoparticles of molybdic oxide shaped as "needle-like" with weight ranging from 1.3 to 32m2/g. The Examiner concluded that the invention and Mestl were identical, and accordingly rejected the invention on the basis of anticipation. On appeal, the Board sided with the Examiner and sustained the 102(b) rejection.
The Board relied on the Specification to construe the term "cylindrically shaped rod-like" as meaning "circular cylinder resembling a thin straight piece or bar of material" and defined "rod-like" as "a thin straight piece or bar of material." The Board read the term "blunt ends" to mean "rounded ends" based on Fig. 4 of the claimed invention as well as on the dictionary meaning. And the term "non-hollow" was given its ordinary meaning of "not having a cavity, gap or space within."
The Board agreed with the Examiner that a "needle" is "cylindrical, solid or non-hollow" like a sewing needle which has dull ends. Besides, Fig. 4, a TEM micrograph of the claimed invention, offered both the Board and the Examiner one more opportunity to supporting anticipation, since some nanoparticles looked like "needles." Appellants argued to no avail that a needle has a pointed tip and that Mestl does not mention the term "rod-like." The Board concluded that the claimed invention was just another "needle-like" MoO3 previously described.
Also, at issue was the invention limitation in terms of weight range. Mestl disclosed a weight range of about 1.3 to 32 m2/g while the invention's range referred to "about 33-44 m2/g." The Examiner argued that "33" overreached into "32," since the word "about" is one of degree and the Specification failed to state its parameters. Appellants argued for precision since Mestl's value "1.3" showed that the BET area could be read with the precision of one decimal, i.e., with great precision. The Board concluded that one skilled artisan would not understand that for every reported BET surface area a whole number ± 0.1 was the standard. Thus, "33"would encompass the value of "32.1" which in turn overlapped Mestl's "32."(22)
What have we learned?
The Board advised that the lack of a specific shape limitation could have been solved by providing the "mean length and/or the mean diameter of the nano-particle." So, the successful patent applicant would have defined the structural parameters of the nanoparticle in length ranges and diameter variations. Besides, this data could have proved crucial in view of the Board's notice that technically defined a "needle" is "at least five times as long as it is broad." Perhaps, the inventor could have shown that the diameter/length ratio of its nanoparticles were shorter; this was a measurement worth to try. The argument would be that Mestl reference does not expressly state the length nor does it state the diameter. Since anticipation requires strict identity, this evidence could have supported a case against anticipation.
The Board agreed that "a picture is worth 1000 words."(23) Pictures are invaluable tools to depict what the invention is all about. However, here it harmed the patent application. As a matter of fact, the Board visualized more "needle-like" nanoparticles in the Fig. 4 of the claimed invention than did the Examiner. (24) So, the lesson is not to take a chance, and to make words the most important tool when the call is close. Appellants should have guided the Examiner with words showing how the nanoparticles were regarded as a cylinder and not as a "needle," and should have explained why some looked like a "needle."
The Board "noted the absence of scientific argument and/or objective evidence" from Appellants' arguments. One such example was the argument by Appellant that "in the absence of" a SEM micrograph, Mestl failed to show strict identity to the claimed invention. Instead this argument should have been grounded on any scientific evidence that could differentiate the two electron microcopy techniques, TEM and SEM. Appellants could have presented a scientific argument, such as that TEM is a technique that provides a much higher spatial resolution than SEM, and could therefore facilitate the analysis of features at atomic scale; they could have argued that these two technologies have significantly improved over the years so to greater precision and any other applicable sounded argument. Thus, providing scientific support for the argument that liking "cylindrically shaped rod-like" to "needle-like" does not comport with the entire nanotechnology context.
(1) See, Vivek Koppikar, Stephen B. Maebius and J Steven Rutt, Current Trends in Nanotech Patents: A View From Inside the Patent Office, 1 Nanotechnology L. & Business 1 (2004). There was a time that patent applicants in Nanotechnology could easily overcome an anticipation rejection since the technology crossed from the down scaling at microscale level into nanoscale level, since the prior art failed to expressly disclose the claimed features
(2) Pursuant to 35 U.S.C. §102, an invention must be "novel," i.e., the primary characteristics claimed in an invention cannot be found in an earlier single piece of prior art. "Prior art" refers to the body of information pertaining to the art in existence before the critical date. That essentially means that the subject matter of the claim(s) is not eligible for patent protection.
(3) Another potential hurdle for nanotech patent applicants is the doctrine of inherency, which defeats a claim if a prior art reference "inherently" discloses and thus anticipate the claimed invention.
(4) Ex-parte Khan et al. (01/30/2008).
(5) For a discussion on key concepts on novelty see Ronald B.Hildreth, Patent Law: A Practitioner's Guide (3d ed. 2006).
(6) In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002), cert. denied, 538 U.S. 907 (2003).
(7) Richardson v, Suzuki Motor Co., 868 F.2d 1226, 9 U.S.P.Q.2d 1913 (Fed. Cir. 1989).
(8) See, e.g., Titanium Metals Corp of Am v. Banner, 778 F. 2d 775, 782 (Fed. Cir.1985).
(9) Mossmam v. Broderbund Software Inc., 51 U.S.P.Q.2d 1752, 1758 (E.D. Mich. 1999).
(10) United States Filter Corp. v. Ionics Inc., 68 F. Supp. 2d 48, 54, 53 U.S.PQ.2d 1071, 1077 (D. Mass. 1999).
(11) See, for example, In re Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA1976).
(12) Helifix, Ltd. v. Blok-Lok, Ltd., 208 F.3d 1339, 1346 (Fed. Cir. 2000).
(13) Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005 (en banc).
(14) See U.S. Patent & Trademark Office, U.S. Dep't of Commerce, Manual of Patent Examining Procedure §2173.01, at 2100-213 (8th ed., rev. Aug 2006) [MPEP]; 35 U.S.C. §112).
(15) See Merck & Co. v. Teva pharm. USA, Inc., 73 U.S.P.Q.2d 1641 (Fed. Cir. 2005); Federal Circuit held that Merck did not clearly set out its own definition of "about" with reasonable clarity, deliberateness, and precision, and thus failed to act as its own lexicographer.
(16) The American National Standards Institute established the Nanotechnology Standards Panel (ANSI-NSP) in 1974. See American National Standard Institute, Nanotechnology Standards: A Foundation for Innovation, 2 Nanotechnology L. & Bus. 269, 270-71 (2005). ANSI-NSP coordinates the standardization of nanotechnology nomenclature, terminology, materials properties and testing, measurement and characterization procedures.
(17) Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 733-34, 122 S. Ct. 1831, 1838 (2002) (Festo II). ( A patentee's decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim)
(18) For an overview of Festo see Carvalho, M. Application of the Festo Framework in Four Recent Appeal Cases. 89 (3) J. Pat.& Trademark Off. Soc'y 216-234 (2007).
(19) The Board pointed out that "mere use of descriptive terms" which terms are "not used to describe the subject matter in the prior art that otherwise appears to be identical does not, without more, establish patentability."
(20) See for example: http// www.eekingalpha.com/article/35013-molybdenum-s-time-has-come-nano-particle-technology-for-the-future - 50k -
(21) BET stands for Brunauer-Emmett-Teller and it is gas absorption technique.
(22) Mestl had taken samples at different points of time of the milling process, weighted them by BET and then plotted that data in a graphic. The rationale follows that Mestl value of "32" in the context of the word "about" and because values read in graphics were not precise then "32" encompasses higher values at the decimal level.
(23) "We consider the Examiner‘s finding that the Specification contains evidence in Fig. 4 showing a "needle-like" nano-particle…relevant to this inquiry because it is a further reasonable characterization of the claimed nano-particle even though the Specification and the claims do not use the term to characterize the claimed nano-particles."
(24) While the Examiner found "at least one of the particles shown [in Fig. 4] appears to be needle-like" the Board found that "several of the nano-particles in center of the TEM image in Specification Fig. 4 can reasonably be described as "needle-like with blunt ends."
Please send your comments to Magda Carvalho at
Magda holds a Ph. D. in Genetics, a J.D. and is registered to practice before the USPTO. She has published several scientific papers and one legal paper on patent infringement.