• Dr. Mohan Dewan | Rajinder Sapru

In order to patent an invention, whether for a product or a process, it needs to meet the following patentability criteria:

• Novelty

• Inventive step (non-obviousness)

• Industrial applicability

In this article, we dwell upon assessing the novelty of patent claims. The Indian Patents Act, 1970 defines "new invention" as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art. An invention is considered novel, if it has not been disclosed in prior art, where prior art means everything that has been published, presented or otherwise disclosed to the public before the priority date of the application.

A patent application for invention contains Claims which describe the elements in the invention over which the right of patent is sought. The claims section in a patent application is a question of law for the courts and assumes talismanic importance in the patent rights. It is, therefore of utmost importance that the claim language be clear and definite, particularly pointing out and definitely claiming the subject matter which the inventor considers his invention. Definiteness of the claims allows to lay bare scope of the invention so that the public can be informed of the boundaries of the invention and at the same time defines what shall constitute infringement. The parameters of the claims can be considered to be the “metes and bounds” of rights owned by the patentee. The claims can use functional language, alternative expressions, negative limitations or any style of expression or a format of claims which makes the boundaries clear.

Different situations may arise for assessing novelty of an application and they are mentioned below:

Drawing the boundary of an invention and a relevant prior art

Novelty of the claims can be assessed by identifying the essential elements of the claims of an invention and determining the closest prior art. If the two are different, then the application claims are novel. It is re-iterated that the invention application claims are compared with a single prior art document and no mosaicking of prior art documents from different disclosures is allowed for comparison with the application. Even if it is shown that a prior art document differs from the invention by a single minor feature, the invention is considered novel.

Once an invention application including claims has been drafted, it is necessary to do a thorough survey of relevant prior art. Having done that, one gets a clear idea where to draw the boundary of the claims of the invention so that the claims are broad enough yet they don’t cross the boundary of the prior art defined. The claims so drafted shall clearly define the “metes and bounds” of the invention and at the same time shall ensure that they don’t overlap the “metes and bounds” of the prior art. If the claims of an invention are drafted in isolation without doing any prior art search and without defining the boundaries of prior art, there is every likelihood that the claims may overlap with a prior art document and therefore risk novelty of the invention. Of course, the risk does not arise when the invention is related to a completely new invention where no prior art exists. However, such inventions are extremely rare.

Generic prior art generic disclosure

A generic disclosure in the prior art may not take away novelty of a specific disclosure. For example, a metal spring may not take away novelty of a silver spring. However, a specific disclosure in the prior art may take away novelty from a generic disclosure in an application. For example, a silver spring disclosed in prior art may take away novelty of an application in which metal spring is claimed.

Similarly, a generic claim cannot be allowed, if prior art discloses a species falling within the claimed genus. The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960).

Extrinsic evidence in prior art

It was mentioned earlier that a single prior art document should contain all the essential elements of an invention in order to destroy novelty of an invention. However, there are instances where extrinsic evidence may be used to explain but not expand the terms appearing in the invention. . In re Baxter Travenol Labs., 952 F.2d 388, 21 USPQ2d 1281 (Fed. Cir. 1991), the invention of Baxter Travenol Labs was about a blood bag containing DEHP, an additive to the plastic which improved the bag’s red blood cell storage capability. Becker taught same blood bag but did not expressly disclose DEHP, which should have made the invention of Baxter novel. However, a technical progress report by Becker disclosed use of commercial blood bags. It also disclosed the blood bag system as "very similar to [Baxter] Travenol’s commercial bag blood container." Extrinsic evidence (depositions, declarations and Baxter Travenol’s own admissions) showed that commercial blood bags, at the time Becker’s report was written, contained DEHP. Therefore, a person ordinarily skilled in the art would have known that "commercial blood bags" meant bags containing DEHP. The claims were thus held to be anticipated and the application was not considered to be novel.

In order to assess novelty of the subject matter, it shall be necessary to look at prior art closely and sometimes documents falling outside the prior art as exemplified in the case discussed.

Prior art not falling in analogous art

For the purposes of assessing novelty of subject matter, it does not matter if a prior art reference does not fall in an analogous art or if it teaches away from a proposed invention. In other words, a prior art document shall take away the novelty of a patent application if it explicitly or inherently discloses every limitation recited in the claims irrespective of the fact that the prior art does not fall in the analogous art or it teaches away from an invention application or is not recognized to solve a problem that is solved by the invention. The novelty shall be assessed based only on the claims and their limitations defined. Twin Disc, Inc. v. United States, 231 USPQ 417, 424 (Cl. Ct. 1986) (quoting In re Self, 671 F.2d 1344, 213 USPQ 1, 7 (CCPA 1982)). State Contracting & Eng’ g Corp. v. Condotte America, Inc., 346 F.3d 1057, 1068, 68 USPQ2d 1481, 1488 (Fed. Cir. 2003) and Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998)

Prior art teaching a range of parameters

Many times, the claims also claim a range of parameters. If the range in the invention is significantly different from a prior art range, then it shall be considered novel. In ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012), the claims of Clear Value were directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less, which obviously covered the range specified by Clear Value. The court held that there is no criticality nor any evidence demonstrating difference across the range and therefore, the range is not novel. On the contrary, inAtofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006), a reference temperature range of 100-500oC did not describe the claimed range of 330-450oC with sufficient specificity. The patentee claimed temperature range as "critical" to enable the process to operate effectively,and showed that one of ordinary skill would have expected the synthesis process to operate differently outside the claimed range.

If there is a range overlap in the claims of an application, it shall be necessary to show criticality of the range in order to claim novelty in the range.

Enablement in prior art and the invention application

The novelty approach is also relevant while assessing claims in an application. The claims of an application should be supported by the enablement in the application. Federal circuit applied a point of novelty approach to enablement in a case involving Automotive Technologies International v. BMW North America Inc (01-CV-71700 July 21, 2005. The claims covered both mechanical and electronic sensors for airbags but the specifications taught only mechanical sensors. The patentee tried to argue that the electronic sensors were known in the prior art and therefore, there was no need to teach how to construct an electronic sensor. The court observed that the specification and not the general knowledge should teach the novel aspects of an invention. The court thus held that a patent doesn’t have to teach other elements as long as they can be worked out by an individual but has to teach the novel elements claimed in the application. The inventor should make sure that the claims are supported by the enablements in the application.

Improvements over prior art

Some patent claims may define an improvement over a prior art. Such claims can be drafted as what is known as “Jepson” claim, in which the first part defines what is already known in prior art and then follows what constitutes improvement. When such applications are assessed for novelty, it is clear in the claims as to what is prior art and what is improvement which is claimed as novelty.

Characteristic not disclosed in prior art is inherent

Inherent characteristic of a primary reference in a prior art document may be missing and when such a document is compared with the invention application, the inherent characteristic may be the only difference between the two. Courts have averred that it may be necessary in such cases to take recourse to extrinsic evidence, which is what a person skilled in the art can make out from the primary reference. The technological facts may be known to those in the field of invention and if it is evident that a PSITA can infer characteristic is inherently disclosed in the prior art, it shall be taken to be so. Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749-50 (Fed. Cir. 1991).

When assessing novelty, it has to be borne in mind that if there are any such inherent characteristics in a prior art document, it needs to be identified and a comparison drawn with the proposed innovation.

Combination of two different prior arts

Novelty of an application may also lie in the combination of two different prior arts. For example, if A+B+C is known in prior art, an application filed for A+B+C+D, where D is also a prior art, shall be considered to be novel. However, the application shall then be screened for obviousness.


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