The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Dec 5th, 2019, 11:06pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
Obviousness
(Moderators: Forum Admin, JimIvey, JSonnabend)
   In re Chu
« Previous topic | Next topic »
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: In re Chu  (Read 1640 times)
Brian
Newbie
*




   
Email

Posts: 9
In re Chu
« on: Aug 29th, 2006, 5:47pm »
Quote Quote Modify Modify

This question concerns the Federal Circuit opinion of In re Chu decided 09/14/1995.
 
Although they reversed the decision of the BAPI, it seems incongruous that the Circuit found that Chu's own work can be used as a 102e/103 reference, since 102(e) specifies that of another.
 
Brian.
IP Logged
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: In re Chu
« Reply #1 on: Aug 29th, 2006, 7:00pm »
Quote Quote Modify Modify

I think the reasoning was that, since the inventors of the prior application were not identical, it was considered patented by "another."  The court went into the fact that identical inventorship is not required for CIP priority, but it seems identical inventorship is required to obviate 102(e).
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Isaac
Senior Member
****




   


Posts: 3472
Re: In re Chu
« Reply #2 on: Aug 30th, 2006, 6:09am »
Quote Quote Modify Modify

Jim's correct about the identical inventorship being required to remove a 102(e) rejection of the same of being not "by others".   If Chu had believed that is own work was being cited against him, he could have provided an affidavit to that effect and the PTO would have withdrawn the objection.   The CAFC did not spend  any time on the identical inventorship point because neither side had any issue with it.
 
What I found more interesting in In re Chu is the portion relating to Chu's attempts to overcoming a design choice, obviousness rejection.   The PTO position was that the evidence for overcoming the rejection needed to be provided in the applicant's specification as filed.
 
The CAFC indicated that the evidence for overcoming such a rejection did not have to come from the applicant's specification, but could be provided in an affidavit.   In fact, the CAFC suggests that it is reasonable that the applicant would not provide the information prior to receiving the rejection.
 
Without getting into a discussion of whether or not it might be preferrable that such information be in the specification, Chu suggests at least that one should not give up on arguing a design choice rejection simply because the rationale for overcoming the rejection is not already in the specification.
IP Logged

Isaac
Brian
Newbie
*




   
Email

Posts: 9
Re: In re Chu
« Reply #3 on: Aug 30th, 2006, 10:27am »
Quote Quote Modify Modify

Issac, Jim,
 
Thanks for the clarification, is the following then accurate:
 
The CAFC recognized that it takes only a common inventor to provide for the benefit of an earlier filing date, so BAPI was wrong in their rationale for relying on the parent as a prior art reference.  However, the CAFC did find that the parent is a valid prior art reference for the following reason:
 
The CAFC then stated that since the claims are not supported by the parent, Chu cannot obtain the benefit of the parent's filing date, and the parent is, for this reason, properly relied on as prior art.  
 
Here is my confusion:
So the CAFC seems to be saying that regardless of inventive entity, if the parent does not support the improvement then the parent can be used as prior art.  
Or is it simply assumed knowledge that if the parent and child had identical inventive entities, it could not be used as prior art under 102 (e).  If so, where there is no identical inventive entity between the parent and the child, the improvement patent is assumed to be by that of another, and that is why the parent could be found as a valid prior art reference.  
 
With this assumption, Chu could have provided (if true) an affidavit to overcome the prior art rejection, stating that the claim at issue was invented by Doyle (he being the sole inventor of the parent).
 
Finally, my personal take home message is that parent applications of CIPs are available as prior art for all claims requiring new matter support from the child application, unless the inventor of the new claim is an inventor in the parent, or there is identical inventive entities on both the parent and child.
 
Thanks for the consideration,
 
Brian.
IP Logged
Isaac
Senior Member
****




   


Posts: 3472
Re: In re Chu
« Reply #4 on: Aug 30th, 2006, 10:50am »
Quote Quote Modify Modify

on Aug 30th, 2006, 10:27am, Brian wrote:
Or is it simply assumed knowledge that if the parent and child had identical inventive entities, it could not be used as prior art under 102 (e).  If so, where there is no identical inventive entity between the parent and the child, the improvement patent is assumed to be by that of another, and that is why the parent could be found as a valid prior art reference.

 
I think the fact that the inventive entities were different was simply not at issue here.   The parties all agreed that the inventive entities involved were different and fought about priority issue.
 
Quote:
Finally, my personal take home message is that parent applications of CIPs are available as prior art for all claims requiring new matter support from the child application, unless the inventor of the new claim is an inventor in the parent, or there is identical inventive entities on both the parent and child.

 
Not quite...
 
103(c) is often relevant in such cases unless the reference is citable under 102(a) or 102(b).   Further even if there inventive entities are the same,  if plural inventors exist for the application and/or the reference, there can still be a question of exactly who invented what.
« Last Edit: Aug 30th, 2006, 10:52am by Isaac » IP Logged

Isaac
Pages: 1 2  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright © 2000-2004 Yet another Bulletin Board