22765

Obviousness S 103
1.	Is the presence of the gizmo in T an advantage over the B advertised product? Has there been better sales of T than B's product that can be isolated from marketing and that correlate to increased practicality/functionality? Have other consumer product manufacturer's failed in attempting to provide the functionality T provides?
   a.  These questions are all related to differentiating PO's T from B's product.  If you don't properly differentiate your product/process, then you can count on little succor from the court.  See International Glass (court holds that using freezing water as a basis of adhesion is not enough to avoid a finding of obviousness relating to a prior invention).  Graham v. Deere and W.L. Gore look at secondary considerations in evaluating the validity of the product that is second in time.  Examples of such considerations are long-felt need, a showing of commercial success (need to show a nexus between success and the new invention) and failures of others who have tired to develop the improved product.  These factors are weighted in relation to the scope and content of the prior art and the level of comprehension of POSITAS w/in the industry.  These questions are also important in setting the time frame for consideration of nonobviousness to the time when the invention was made.  Otherwise, there is a danger skewing one's perceptions under the influence of hindsight.  Sernaker (Gould is a good example where this danger was recognized and avoided)
2.	What industry is in play here with the development of these two products? Could a standard member of the industry the inventions concern develop T merely by looking at B's product?
   a.	This question is trying to elicit a POSITA standard  for purposes of the obviousness standard.  The level of skill of the relevant Posita will depend on the industry segment that is identified by the product.  A more specialized industry segment that is pointed to by the nature of the product may possess POSITAs with a higher level of sophistication, which would be bad for PO's claim.  PO wants the POSITA standard to be fairly broad. This way it will encompass those POSITAs with less specialized knowledge and the obviousness standard won't be as easily met.


On-sale bar  S 102(b)
1.	Was the advertisement of B's product occurring at a time when the product was functional? Was the product being realistically marketed to the public?
   a.	This question is getting at whether the two parts of         the Pfaff test were fulfilled by B's advertisement.  The test states that a patent claim is invalid under 102(b) if the claimed invention was
       i.	The subject of a commercial offer for sale
           1.	the fact that there was a magazine advertisement, including the picture of b's product, indicates that there was the presence of a commercial offer for sale.  However, Linear Tech has incorporated contract law for the definition of offer in patent law.  It is settled precedent in contract law that advertisements don't serve as a commercial offer, but as an invitation for a potential consumer to make an offer.  The state of the offer would also depend on the presence of price terms, quantity terms and whether there were any written guarantees or disclaimers.
       ii.	On a date when the invention was ready for patenting.
           1.	Even if the picture in the magazine of b's product was only an artist's rendering, and no prototype of the product existed, this would be irrelevant if the disclosure of the invention was sufficiently specific to enable a person killed in the art to practice the invention.  Robotics pp. 3
2.	Did B take any actions to assure itself of the functionality of its product?
   a.	Such assurances would take the form of experimentation which if properly carried out is a negation of the public use part of the statutory bar.  City of Elizabeth, Smith and Lough flesh out this portion of the case law.  Perhaps an argument could be made that b's product was still in the experimental stage, but the fact that it was being advertised in a magazine indicates that if any experimentation was occurring it was of the marketing and not the engineering variety.  This kind of experimentation is of a commercial variety and appears to be a more blatant form of the commercial experimentation that doomed the patent owner in Smith, the Carpet Fresh case.  For the PO to show that B's product was not in public use they would need to show that B maintained control over it's product, there is no evidence of control facially present on these facts.    Lough presents a good summary of facts to look for in proving experimentation: 1. number of prototypes and the duration of the test, 2. records and reports, 3. confidentiality agreements, 4. commercial exploitation, 5. and control.
3.	What was the circulation of this magazine that the invention was found in? How did this circulation correlate with the industry of B and PO?
   a.	This question sets the groundwork for analogizing the circulation and availability of a magazine to the circulation /availability of the academic papers in the Hall and Cronyn cases.  If the circulation of these magazines is limited largely to Scotland and the advertisement was of a small, inconspicuous design, then a good case could be made by the PO that there is not sufficient public accessibility of the invention for an on sale bar to operate.  This could be a situation similar to the Exxon v. Mobil case where the product in question just was not getting much publicity among the people in the art.

Conception and Derivation 102(f) and 102 (g)
1.	Who was first? When did Products OK or any of its inventors first develop the notion of T?
       a.	Here we are trying to determine if via 102g, the PO can relate back to a conception that precedes that of b.  Conception, according to Hybritech, cited in Burroughs, is a "definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice."  Since this is a mental act and suffers form the subjective evidentiary deficiencies inherent in such an act, courts require corroborating evidence of a contemporaneous disclosure that would enable one skilled in the art to make the invention.  The PO would have to prove a complete conception before that of b, and untarnished by subsequent experimental failures that would unduly impair the definite and permanent nature of the complete idea.
2.	Did work on T progress steadily from the time of this notion development to the time when the patent was applied for?
   a.	The Gould case illustrates that the first to reduce to practice will win unless the first to conceive was diligent in reducing from just before the other's conception and continuing through one's own reduction to practice.  This may be a hard proof for the PO here, as a filing over two years after the conception may not reflect the kind of diligence the court is looking for.
3.	Did PO develop the idea on our own accord or did we appropriate an idea developed by B? What is the level of similarity between the b product and T?
   a.	This question is getting at the notion of derivation.  The basic premise is getting at whether  we, the PO, stole the idea. The relevant statutory language supports this premise 102(f)-"he did not himself invent the subject matter sought to be patented?"  The two main aspects of derivation, as shown in Exxon, is conception by the other inventor and communication from the other inventor (in our case b) to the patentee (PO). Throughout derivation cases, the relevant term of art is "possession of the invention".
   b.	Conception plays in by establishing who has priority and is a matter of law, whereas determinations of derivation are a matter of fact. The communication from the other inventor to the patentee must be sufficient enough in a case of derivation to enable one of ordinary skill in the art to construct and successfully operate the invention.  Evidence on these points would also have to be supported by a clear and convincing standard of evidence.  If we, like Exxon, were able to prove prior conception, than any derivation claim by b would be foreclosed.  On the other hand, if b can prove to be the originator of the idea and that we appropriated an idea not rightfully ours, we may be in trouble.  However, the PO would still have the defense that we have altered b's product by addition of the gizmo, which if it proves to be a significant alteration, would probably protect us from a claim of derivation.