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[klaviernista]

Long story short, I am drafting an opinion on the validity of a patent (A) issued to a competitor.  Patent A is drawn to a composition containing two elements, X and Y.  The amount of X and Y is controlled such that the ratio of the concentration (mols) of X to the concentration (mols) of a functional group on Y is within a certain value.  We'll call the functional group Y', and the ratio X:Y'.

Interestingly, 5 years prior to the earliest priority date of the patent in question, the competitor filed another patent application, B which is still pending.  The figures of application B, include a table that discloses the formulation of various compositions that the inventor tinkered around with.  Many of those formulations contain X and Y.  I believe that at least one of the compositions disclosed in application B anticipates the composition claims that were issued in Patent A.  However, application B reports the composition in terms of a ratio of concentration (mols) of X to concentration (mols) of "alkalinity."  While application B is clearly using the same component Y (and hence, Y') as patent A, application B does not explan that mols of alkalinity correlates to mols of Y'.

I have located a dissertation, C, which was issued to a graduate student of the primary inventor of patent A and application B.  The dissertation clearly explains that "mols alkalinity" correlates (1:1) with mols of Y'.  However, the dissertation is dated well after the filing date of patent A, and thus is not prior art.

Which bring me to my question and headache of the day. Can I use the dissertation as "evidence" that one of ordinary skill in the art would understand that "mols X : mols alkalinity'" equals :"mols X : mols Y'?" It would seem to me that the Phillips case says that this is permissible (see quote below), but I am waffling because Phillips is primarily concerned with the interpretation of claim language, and not terms used in the specification of prior art.

Admittedly, I could find the answer through some legal research.  But I am having a brain fart today and my eyes are killing me because I have been reading cases all day.  thus, I thought I woudl post the issue to the board and see what you all come up with.

Best,

Klav

“The ordinary and customary meaning of a term may be evidenced a variety of sources, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Phillips v. AWH Corp., 415 F.3d at 1314 (Fed. Cir. 2005).

[JimIvey]

I can't think of any reason you can't use it. 

I can only think of reasons why it might not be enough.  The ultimate thing to be show is what the ordinary artisan would have known and/or thought obvious at the time of invention.  Evidence from after the invention leaves open the possibility that what was known and/or thought obvious by the ordinary artisan had changed between the time of the invention and the time of the later evidence.

If the dissertation is a few months after the invention date but merely states the proposition as well-known background information, the odds that the mind of the ordinary artisan didn't change during that time.  Such would be much harder to show if the dissertation were years later and seem to suggest that the proposition was relatively recently discovered.

On the other hand, things might be different if you're trying to show invalidity by prior use or sale.  Then, you'd have prior use of mols X: mols alkalinity and any reference from any time showing that mols alkalinity is, in fact, mols Y.  The result shows that prior use of mols X:mols alkalinity is actually prior use of mols X:mols Y.

I hope that makes some sense.

Regards.

[Isaac]

The dissertation clearly explains that "mols alkalinity" correlates (1:1) with mols of Y'.  However, the dissertation is dated well after the filing date of patent A, and thus is not prior art.

In this case, I don't think it matters what an ordinary artisan would know or believe as long as the statement is factual.  Surely the chemistry in our universe operated the same at the time the dissertation was published as it did at every other relevant time in a patent case.   Just be sure that the circumstances (e.g., range of concentrations involved, particular compound Y) are the same.   

Be suspicious anytime you are using obviousness type terms in an anticipation rejection situation.  The result can be muddled/incorrect thinking.

[klaviernista]

Be suspicious anytime you are using obviousness type terms in an anticipation rejection situation.  The result can be muddled/incorrect thinking.

I agree that this can be a tricky area.  FWIW, I have 2 references that, individually, anticipate 66% of the claims of the patent at issue under 102(b).  For the remaining 34% of the claims, I am relying on 3 different obviousness positions.  Two of those obviousness positions rely on the combination of the 2 anticipatory references with a the competitor's prior patent application (B).  That combination is, for lack of a better description, completely obvious.  It's a situation where the the anticipatory references disclose details of a composition for use in a specific process, but only discuss the process generally.  Applicant B discusses the process in detail, and discloses (generally), that compositions such as those in the anticipatory reference can be used in that process.  So the obviousness argument is essentially based on two explicit suggestions in the prior art, namely that compositions in the anticipatory references are useful in processes such as those disclosed in application B, and processes in application B are suitable for use with compositions such as those disclosed in the antcipatory references.

The third obviousness argument relies on application B itself and is more tenuous.  But it is still useful as a backup position.  My inquiry above has to do with this third obviousness argument, and so will not make or break our overall invalidity position even if it ends up being muddled.