[priorart-discuss] Legal Definition of Prior Art....

Manny W Schecter schecter at us.ibm.com
Wed Mar 15 13:54:44 PST 2006


I've looked at the example and the howto.  I certainly agree that prior 
art contributing to obviousness is valuable.  Rather than bog down the 
instructions with trying to explain too much about anticipation versus 
obviousness, I suggest the focus be on finding the closest prior art, 
including each and every feature of a claim, preferably in a single 
reference. 

Manny W. Schecter
Associate General Counsel
Intellectual Property Law
IBM Corporation
schecter at us.ibm.com
Voice: 914-765-4260 (TL 251)
Fax: 914-765-4290 (TL 251)
Assistant: Kathy Koblosh x4106






McCullough Theodore <theo702000 at yahoo.com> 
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03/15/2006 04:37 PM
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[priorart-discuss] Legal Definition of Prior Art....






>I hope some of you will read through the example and the HowTo, and
>maybe even help me to improve those.

While I might be putting too fine of a point on things, 
I think that it is worth while to point out that prior
art can be prior art showing that a patented
invention is anticipated, or can be prior art that shows 
an invention is obvious. 

Why this is an important distinction is that it can affect 
one's search strategy and how one views the art that 
they have uncovered.  For example, prior art showing 
anticipation is in many cases a single piece of art that 
anticipates all of the claim limitations of the
subject patent, whereas with obviousness you can use 
combinations of art that by themselves do not render 
the subject patent obvious, but in the aggregate do render
the patent obvious (assuming that there is a suggestion 
or motivation to combine).  Do any of the other attorneys 
on th!
is list
 have any thoughts on the extent to 
which (if at all) we need to address the issue of 
obviousness versus anticipation?
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