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« Comments on the USPTO's Subject Matter Eligibility Guidance -- The ABA | Main | Court Report »

November 04, 2015


If what is claimed in patent B is fully disclosed but never claimed in earlier-filed patent A as of A's filing date, A is still at least 103 prior art to B as of A's filing date. What statutory basis is there for for treating patents based on provisional applications differently? That is, assuming the subject disclosure is not later-added "new matter" as in some CIP based patents and some regular applications based on provisonals. Is this case confusing 103 prior art requirements with 112 requirements?

Mr. Morgan,

You want to use "A" as a single reference 103?

I think you come close with the idea of CIP, though. There is clearly some "parallel" between a CIP and its parent (for added matter) and the Non-provisional and its parent (the provisional).

I just don't think that you need to go further than merely identifiying that not everything in a non-provisional rightly earns a critical date of the "parent" provisional.

"But unfortunately, there is no support in the Dynamic Drinkware case itself that supports this interpretation."

I agree. There is not much support *in this case* for that interpretation.

There is also not much support in this case for a common sense approach to obviousness. That's in KSR. There is also not much support in this case for a judicial exception to 101 for ancient and fundamental business methods. That's in Bilski and Alice.

In other words, there are lots of requirements for patent validity, and not all of them are in one case.

The Drinkware case is really focused one requirement: the Wertheim requirement. The Drinkware case basically establishes this requirement as an element of a petitioner's case of invalidity. You can't just assume that a prior art reference is entitled to a provisional application's earlier date, simply because the reference claims the earlier date. Instead, you must also show that the prior art reference satisfies the weird Wertheim rule.

In other words, the Drinkware case establishes that satisfying Wertheim is a necessary condition for proving invalidity. It does not say (ever) that it is sufficient.

In your earlier post, and in portions of this post, you seem to read Drinkware as establishing satisfaction of Wertheim as a *sufficient* condition for proving invalidity. But it is a merely necessary condition. You can see this by parsing the language of the decision. The Drinkware court says:

"A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1"

The language "only ... if" indicates a necessary condition. It does not indicate a sufficient condition.


Because the Wertheim rule, as applied by Drinkware, is a merely necessary condition, there may be other necessary conditions. For example, to be valid, a patent must also satisfy 101, 102, 103, 112, and every other condition of patentability. (Mark Lemley has enumerated most of them in his article The Fractioning of Patent Law). So the existence of the Wertheim condition here does not imply (as you seem to suggest) an absence of other conditions. There are plenty of other conditions.

One of the other conditions is that the provisional must provide support for the relied-on disclosure, if that disclosure is going to be used (as of the provisional's filing date) as prior art. For that rule, you can simply read the text of former 102(e), or read decisions such as:


It is also common sense. It would be manifestly unjust to use a provisional's filing date as prior art, if the relied-on disclosure didn't exist by that date and was only added later.

BTW, I think my comment above confuses two things:

1. necessary condition for claim validity
2. necessary condition for claim invalidity

Let me clarify. The Drinkware decision writes that satisfying Wertheim is a necessary condition for invalidating a patent under 102e. So there may be other necessary conditions, such as the traditional disclosure requirement, which is discussed in the Giacomini case and flows from the language of old 102(e).

By *analogy*, there are many necessary conditions for patent validity. A valid patent must be new. But it must also be nonobvious. And it must also satisfy 112. Etc.

The point, in both cases (necessary conditions for invalidity under 102e, and necessary conditions for validity in general), is that a decision discussing one necessary condition need not discuss other necessary conditions. In the context of necessary conditions for invalidating under 102(e), a court that discusses Wertheim does not need to discuss Giacomini, if the Wertheim rule is not satisfied.

Similarly, in the context of necessary conditions for patent validity, a court that finds a patented invention old does not also need to discuss obviousness. Nor does it need to discuss section 101, or section 112. The existence of one necessary condition does not imply the absence of other necessary conditions. And, if one necessary condition fails, then the court can move on, because all necessary conditions must be satisfied for the relevant party to win - if a single necessary condition fails (e.g., if the Wertheim rule is not satisfied), then it's game over.

Skeptical, re "I just don't think that you need to go further than merely identifying that not everything in a non-provisional rightly earns a critical date of the "parent" provisional." Yes, but is not the Fed.-Cir.-confused issue here how that "identifying" is to be done, OTHER than the easy case when the subject disclosure was simply not present in the provisional as of the provisional filing date?
P.S. Yes a single reference 103 is unusual, and I was merely simplifying the question with that, but why is that not possible under KSR in some cases? By a missing non-novel claim element being provided by KSR's plurally-repeated "common sense" of the POSITA?

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