Prior Art Search Flashcards

Under pre-AIA 35 U.S.C. § 102(b), a patent is barred if the invention was 'on sale' in the United States more than one year before the filing date. The Supreme Court's Pfaff v. Wells Electronics holding established that the on-sale bar applies when:

Answer: The invention was the subject of a commercial offer for sale and was ready for patenting

In Pfaff v. Wells Electronics, the Supreme Court held the on-sale bar requires (1) a commercial offer for sale and (2) that the invention was ready for patenting (either reduced to practice or depicted in drawings enabling a POSITA).

An applicant files a PCT application designating the U.S. on March 1, 2023, claiming priority to a provisional filed March 1, 2022. A prior art article was published February 15, 2023. For AIA § 102 purposes, what is the effective filing date for determining if the article is prior art?

Answer: March 1, 2022, the provisional filing date, if the provisional adequately supports the claims

Under AIA § 100(i), the effective filing date is the filing date of the earliest application whose disclosure supports the claims, which here would be the provisional if it adequately supports the claims.

A prior art search uncovers a doctoral thesis deposited in a university library but never formally published. Under MPEP § 2128, when does such a thesis become a 'printed publication'?

Answer: When it is cataloged and accessible to the public in the library

A thesis becomes a printed publication when it is cataloged and accessible to interested members of the public, which can occur when shelved in a publicly accessible library.

A practitioner is using the Cooperative Patent Classification (CPC) system to search for prior art. CPC subclass H01L covers semiconductor devices. A search within H01L returns too many results. What is the best next step?

Answer: Narrow the search using more specific CPC subgroups (e.g., H01L 29/66) combined with relevant keywords

CPC is hierarchical; moving from broad subclasses to specific subgroups, combined with keywords, narrows results to the most relevant prior art.

Under AIA § 102(b)(2)(C), the § 102(a)(2) prior art exception applies to a commonly owned application when:

Answer: The subject matter disclosed in the earlier application and the claimed invention were commonly owned at the time the later application was effectively filed

§ 102(b)(2)(C) excepts § 102(a)(2) prior art when the subject matter and the claimed invention were commonly owned (or subject to a joint research agreement) as of the effective filing date of the later application.

An examiner combines two references to reject a claim under § 103. The applicant argues the references cannot be combined because doing so would 'change the principle of operation' of the primary reference. This argument is relevant to which KSR/Graham factor?

Answer: Whether there is a reason to combine the references with a reasonable expectation of success

An argument that combination would change the principle of operation of the primary reference attacks whether a POSITA would have a reason to combine, since such a modification would undermine the reference's intended purpose.

Which of the following is NOT a recognized prior art category under AIA 35 U.S.C. § 102(a)(1)?

Answer: An invention known only to the inventor and kept as a trade secret

Under AIA § 102(a)(1), prior art must be publicly accessible; an invention kept as a trade secret by the inventor is not publicly available and therefore not prior art under § 102(a)(1).