Interference No. 105,174 Paper 86
Henkel v. P&G Page 12
party’s claims, i.e., that the involved claims of one party are neither anticipated nor
rendered obvious by the subject matter of the opponent’s claims when each of the
opponent’s involved claims are treated as prior art. 37 CFR § 41.203(a) (definition of
“interfering subject matter”). “Anticipate” and “obvious” have their usual meanings in
patent law. To anticipate, the “prior art” claim must describe each element of the
opponent’s claim. In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994). As in patentability and validity determinations, “prior art” which fails to
describe, either expressly or inherently, each and every element of the opponent’s
claim does not anticipate. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560,
1571, 7 USPQ2d 1057, 1064 (Fed. Cir. 1988); Kalman v. Kimberly Clark Corp., 713
F.2d 760, 771, 218 USPQ 781, 789 (Fed. Cir. 1983). Thus, a showing that any claimed
element is absent will defeat anticipation.
The determination of non-obviousness involves the familiar considerations
mandated by Graham v. John Deere Co., 383 U.S. 1, 17-18, 146 USPQ 459, 467
(1966): (1) the scope and content of the prior art; (2) the level of ordinary skill in the
relevant art; (3) the differences between the claimed invention and the prior art; and (4)
objective evidence of nonobviousness, if any. See McNeil-PPC, Inc. v. L. Perrigo Co.,
337 F.3d 1362, 1368, 67 USPQ2d 1649, 1653 (Fed. Cir. 2003). Obviousness (and
non-obviousness) is determined from the perspective of a hypothetical person having
ordinary skill in the art. Standard Oil Co. v. American Cyanamid Co., 774 F.2d 448,
454, 227 USPQ 293, 297 (Fed. Cir. 1985); Kimberly-Clarke v. Johnson & Johnson, 745
F.2d 1437, 1453, 223 USPQ 603, 612-14 (Fed. Cir. 1984) (discussion the origin and
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007