Exam number 22749

I assume:
1.- that B's item (hereafter, just 'B') is not patented in the US or
abroad, since it is not a reference in the T applicationŠ FWIW this takes
care of some §102(c) problems...
2.- that the PO, B and the AI have no ownership or obligation of assignment
in common (§103(c) issues)
and
3.- there are no §101 or §112  problems with the patent, inventors, claims,
etc.


Q1:  Litigation and the claims: the history of T.
What is the specific history of T?  What are the exact claims in the T
patent?  What conduct or item of AI are we challenging?

AI will either try to evade or invalidate the T claims, perhaps both.

The claim language is critical and is the basis for our infringement suitŠ
but evasion of the claims is beyond §§102 and 103.

For PO to lose the validity case, AI need only show a §102(b) bar or a §103
bar.
In this context, the history of T is critical.  Through discovery, AI will
seek to show that "the invention was known or used by others in this
countryŠ before [PO's] invention" of T.  §102(a).  "Others" may be AI
people, but could be a third party (here, particularly B).  If this is a
component of the AI defense, it will help if T was invented 1 year before
the filing date.  The §102(b) bar makes proof of earlier invention have
little value.  (see below).
It would be good if T applications for foreign patents were not filed
before the §102(b) critical date for the sake of §102(c).


Q2:  The relation of B to T
What is B?  How similar is it to T?

B as §102(a) prior art:
§102(a) will invalidate the T patent if B, as pictured in the Scottish
magazine ("described in a printed publication in this or a foreign
country"), expressly or implicitly teaches all the elements of T before T
was actually invented.  If B is a US product and anticipates T then T was
"known or used by others in this country" and §102(a) will again invalidate
the T patent.  If all but G are taught, then the question is of §103.  (see
below)
Of course, since the printed publication was received by the public >1 year
before the filing date this may implicate §102(b) as well.

B as §102(b) prior art:
For B to constitute §102(b) prior art, it has to have been "known or used"
in this country more than 1 year before the filing dateŠ and teach all of
the claimed elements of T (either as an apparatus or a process claim).
Since B apparently lacks G, B seems more a §103 problem.  (see below)
However, if there is a G-like item internal to B and B is a US product, the
T patent may die on this ground.

Q2:  The relation of G and K to T.

Is G previously known?  What does G do for T?  Do K and B have similarities
in function or structure?  Can anything else do the G function?

B as §103 prior art:
If some other mechanism in B, part X, function as G does for T, the
question would be if G is known as a substitute for X (this might also be
§102 anticipation if G and X are know to be fully equivalent).

If B is essentially T without G and G is known, then we will have to see if
a POSITA would have find motivation in the prior art to combine G with B.
If the G-B combination (arguendo, B+G=T) presents significant and
unexpected improvements over a US-known B, then T may survive an
obviousness challenge.  (same for K+B=T)  'Secondary'  or objective
considerations, including copying of T by the AI (perhaps alleged in the
suit) may further protect against obviousness challenges.

If G is novel and/or presents an improvement over the prior art (now
including both K and B), then the claims are harder to invalidate for
obviousness.