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[W]

Curious. When dealing with prior art, how far back do you track?

For instance, suppose I have a hypothetical invention of a new toothbrush. Obviously, I need to debunk other designs for a toothbrush. But how about a standard (hair) brush? It shares many similarities. Or perhaps the bristles? Or the handle?

I'm dealing with a larger problem. Multiple components are involved: each one important, but questionable if it should be included. Should I go with the closest matches (i.e. limiting the prior art to the equivalent of brushes?) or should I extend beyond that? How do you choose the prior art you wish to include?

-W

[Jonathan]

Regarding how far back to look back, a prior art reference can not be disqualified due to its age. That being said, look at the technology area - for software arts, it probably is sufficient to not look back that far, say 10 to 15 years, as it is a fast evolving area. For something mechanical, references form 30 to 50 years ago can still be highly relevant. Decide on how fast the art evolves.

Dealing with the second part of your question, you should not exclude technology areas that one skilled in the art would naturally consult to solve their particular problem. For your hypothetical example, it does not sound unreasonable to look at hairbrushes when perfecting the toothbrush.

[eric stasik]

W,

It seems to me that how "far back" you search and how broadly you search are two different questions that have more or less the same answer:

Anything considered prior art according to 35 USC § 102 or 103 is fair game.

MPEP § 706.2 gives a good summary of the difference.

"DISTINCTION BETWEEN 35 U.S.C. 102 AND 103

The distinction between rejections based on 35 U.S.C. 102 and those based on 35 U.S.C. 103 should be kept in mind. Under the former, the claim is anticipated by the reference. No question of obviousness is present. In other words, for anticipation under 35 U.S.C. 102, the reference must teach every aspect of the claimed invention either explicitly or impliedly. Any feature not directly taught must be inherently present. "

Using your toothbruse example, this says essentially that if a similar toothbrush was known to the public prior to your invention, you can't get a patent.

This might be thought of as the answer of how "far back" to look.

The MPEP goes on:

"Whereas, in a rejection based on 35 U.S.C. 103, the reference teachings must somehow be modified in order to meet the claims. The modification must be one which would have been obvious to one of ordinary skill in the art at the time the invention was made. See MPEP Section 2131 - Section 2146 for guidance on patentability determinations under 35 U.S.C. 102 and 103."

http://www.bitlaw.com/source/mpep/706_02.html

Using your same example, this says in effect that any brush (or combination of brushes) known to the public prior to your date of invention is prior art.

This might be thought of as the answer to "how broad" you should search.

In practice, I think there is a pretty wide lattitude about how these are interpreted. I've seen both US examiners and EPO search departments  come up with some pretty creative stuff under both of these categories.

Regards,

eric stasik

[W]

"In practice, I think there is a pretty wide lattitude about how these are interpreted. I've seen both US examiners and EPO search departments  come up with some pretty creative stuff under both of these categories. "

And that's what keeps me awake at night.

-W

[Isaac]

The hairbrush and toothbrush scenario is kind of an interesting
example.  The federal circuit recently issued an opinon affirming a
rejection by the PTO where an examiner made a rejection using
a toothbrush as analogous art as part of a 103 rejection on a hairbrush.

http://www.fedcir.gov/opinions/03-1358.doc

[eric stasik]

"And that's what keeps me awake at night"

Well W as I always say it is better to confront these arguments during prosecution than during licening, or litigation.

It is sometimes hard to see this when you are arguing for allowance, but difficult examiners are actually your best friends. If they do their job well, your patent is much more likely to stand up when you need it!

What keeps me awake is worrying if the patent I am trying to license will be shot full of holes by prospective licensees because the claims were not thoroughly vetted during prosecution.

On preview - great link Mr. Clark.

Regards,

eric stasik

[W]

Mr. Clark, that's incredible. I completely picked that example out of the air.

And as the number of applications filed annually scales upwards, there may reach a point where a couple hundred references will pervade an application.

My worries range from referencing too much (stacking the deck, I believe the examiner can call you on this) to referencing too little.

-W