Chapter 2 sets forth what is or is not prior art. The next step is to compare the invention to the prior art in an evaluation of the patentability of the invention: Are there differences between the invention and the prior art that set the invention sufficiently apart to qualify the invention for a patent? The differences that qualify are those that make the invention “novel” and “nonobvious.” Novelty requires that the invention differ in some way from the prior art, while nonobviousness requires that the difference be great enough to rise to the level of a patent grant. Admittedly, these explanations beg the question, but novelty and nonobviousness are distinct requirements, as evidenced by the fact that they are stated in separate sections of the patent statute, Sections 102 and 103, respectively, of Title 35, U.S. Code. The novelty section however is primarily a statement of what is or is not prior art, while the nonobviousness section does little more than state that an invention must be nonobvious over the prior art to qualify for a patent. As patent courts have been called upon to apply these two requirements to an untold variety of inventions, an intricate framework of definitions for each requirement has evolved. These frameworks are explored in this chapter and in Chapter 7, respectively.

As a general rule, however, an invention can only be evaluated for nonobviousness when it presents something novel, or at least different, to evaluate. Novelty is therefore a threshold requirement, one that an invention must meet before a patent examiner, a judge, or a jury will consider any arguments, explanations, test data, or evidence of any kind that a patent applicant, owner, or attorney might submit to convince the PTO or the courts of the nonobviousness of the invention. This discussion of patentability therefore begins with novelty. What makes an invention novel? And why do some inventors seem to be more prolific in producing novel ideas than others?

The answers to these questions begin with an understanding of what constitutes the process of inventing. Racking one's brain to think up novel ideas specifically for purposes of patenting or poring over the latest journal articles or the patents of others as a stimulus for generating ideas on one's own are neither necessary nor the best way to arrive at potentially patentable inventions. Novelty, and thus inventions that are candidates for patenting, can instead be found in any of the various adjustments, substitutions, variations, expansions, discoveries, and solutions that arise not only in addressing a problem but also in the performance of routine tasks, whether those tasks are assigned as part of one's job or simply encountered in everyday living. What the typical scientist or engineer may think of as a trivial change may indeed be a candidate invention for patenting. One of the keys to developing a patent portfolio is therefore the ability to recognize novelty, and patent law does so in a variety of ways, many of which might not be apparent to the casual researcher, technician, or problem solver, whether that person is an expert in the relevant field of technology or one still on a steep learning curve. The following sections describe some of the more prominent features of what the legal system recognizes as novelty in patent law and conversely what constitutes “anticipation,” which is the absence of novelty.

6.1 Anticipation and the “All Elements in a Single Reference” Rule

It has often been said that all inventions are combinations of known elements, although many technologists will find it debatable as to whether a particular component or even the invention itself is an element or a combination. Nevertheless, many inventions are indeed mixtures or linked combinations of components or series or coordinated combinations of steps or functions, and one of the features of novelty in patent law is that these inventions are novel unless all of the components, steps, or functions are disclosed in a single piece of prior art. An example of an invention in which this question arose is the case of Broadcom Corporation's Patent No. 6,714,983.¹

The invention in this patent is in the field of networks for receiving and transmitting radio-frequency (RF) communication data between mobile devices (“transceivers”) and a data-processing terminal or between different mobile devices themselves or both. As examples of these mobile devices, the patent cites battery-powered, handheld devices such as those used in warehousing for inventory control and those used in rental car operations by van operators as they take orders from passengers on their way to the rental desk and by rental car lot attendants for logging cars and mileage as they are returned to the lot.

The filing date of the original application, which was refiled several times before Patent No. 6,714,983 was granted, was August 21, 1991, mentioned here to place the patent in its historical context in the development of mobile telephone technology. The power sources available for mobile phones and similar devices in 1991 resulted in devices that were large and cumbersome compared to those being made decades later, and the invention in the patent reflected this. In addition, each business application had its own special requirements due to the different environments in which the various applications used the devices, the different distances over which they transmitted their signals, and the different frequency bands in which they were required to operate. As a result, each application had different RF communication characteristics, which in turn required different transceiver types and different antennae. In some applications, a single device had to support multiple sources of data, each with a different set of communication characteristics. Individual mobile devices could be made more flexible by using module cards for custom and application-specific functions and by designing the mobile device so that a module card could be inserted in a slot in the device, leaving the most basic functions to the device itself. The typical device had only one slot, however, and while devices existed that had two or more slots, these devices had to contain interfacing capabilities to accommodate the different communication characteristics received in the different slots. This interfacing required additional power, which made the multislot devices impractical for many portable applications. The invention in the Broadcom patent solved the problem by incorporating two or more communication transceivers in a single module that contained a communication processor and providing the module with the ability to roam between base stations at a controlled frequency to reduce the power needed by the communication processor and to communicate with different base stations in a structured manner.

When Broadcom asserted the patent against its competitor Qualcomm Incorporated, one of Qualcomm's defenses was that the patent was invalid since it was anticipated by (lacked novelty in view of) the Global System for Mobile Communications (GSM). The GSM was developed by the European Telecommunications Standards Institute (ETSI) and is a standard set of protocols for digital cellular networks used by mobile phones. The protocols are set forth in a set of specifications originally published by the ETSI the year before Broadcom's 1991 filing date. Although the Broadcom patent did not mention mobile phones, it claimed the invention in broad terms (“One or more circuits adapted for use in a mobile computing device comprising … a terminal adapted to receive power for at least one of the circuits; … communication circuitry comprising a reduced power mode and being adapted to use a first wireless communication and a second wireless communication … to transmit data to access points, the … circuitry reducing power by controlling the frequency of scanning for the access points; and processing circuitry …”), and Qualcomm contended that the published specifications for the GSM collectively described a technology that met the language of the Broadcom claim. Qualcomm specifically cited 11 GSM specifications, even though Qualcomm's attorneys recognized that a claim is only anticipated if all elements of the claim are disclosed in a single reference document. Qualcomm's argument was that despite the fact that each of the 11 specifications was a separate document, the 11 specifications were like chapters of a book and functioned as a single, coherent reference. The case went through a trial and an appeal, and both courts disagreed with Qualcomm on this issue, the appellate decision² noting that the different specifications were authored by different subsets of authors at different times, each with its own subtitle and separate page numbering and each standing as a document in its own right. Since no single specification revealed all the elements of the Broadcom claim, anticipation was not present,³ and the patent could not be declared invalid for lack of novelty.

When a single prior art document discloses less than all of the elements of a claim, the document can still however anticipate the claim if the missing element is “incorporated by reference” into the document from another document or if the missing element is deemed to be “inherent” in the document.

6.1.1 “Incorporation by Reference” of the Missing Element from Another Source

If a missing element is found to be “incorporated by reference” into a prior art document, the element is considered part of the document even though specific mention of the element is only found in another document. An example of an application where the invention was held to be anticipated by a single reference document that incorporated an element of the invention by reference to another document is Application No. 11/617,506 filed by Schlumberger Technology Corporation.⁴ Drawings from the application are shown in Figure 6.1A and B.

The invention in the Schlumberger application was a device to be used in the manufacture of casings for oil and gas wells. The background of the invention was the known technique of first lining a wellbore (100 in Fig. 6.1A) with a casing (110) that is typically cemented in place, then perforating the casing at various points by detonating laterally directed explosive charges (125) on a perforating gun (120) that has been lowered into the wellbore. This created openings in the casing, with each opening extending laterally into the surrounding earth formation (105) to form elongated cavities (140) in the formation through which gas or oil from the formation could flow toward the casing openings and enter the wellbore. The purpose of the invention was to check the effectiveness of the perforating guns by determining the depths to which the cavities extended into the formation, and the invention achieved this by use of acoustic waves. To do this, an acoustic signal was generated at one depth inside the wellbore, and the resulting acoustic signal at a second depth was detected, the two depths arranged such that one (200 in Fig. 6.1B) was above and the other (210) below the depth of the cavity openings. The presence of a cavity caused the signal to become attenuated by the Helmholtz effect between the generator and the detector, and the degree of attenuation was directly related to the depth of the cavity.

The claims in question in Schlumberger's patent application called for the use of acoustic transponders that contained piezoelectric transducers for the signal generator and the detector. These claims were rejected for lack of novelty over an earlier patent to Schlumberger's competitor Atlantic Richfield Company, Patent No. 5,218,573, that disclosed the same system but mentioned the acoustic signal transmitter and receiver only in general terms. The Atlantic Richfield patent did however state that the transmitter and receiver “may be similar to the type described in my U.S. Pat. No. 4,949,316” (another Atlantic Richfield patent), which indeed disclosed piezoelectric transducers although not for determining cavity depths. The context for the piezoelectric transducers in the '316 patent was in logging tools that are generally used for scanning a subsurface geological formation to provide information relating to the various strata and hydrocarbons that constitute the subsurface formation. Schlumberger responded to the rejection by arguing that the '573 patent did not itself disclose the use of piezoelectric transducers, but the PTO Appeals Board⁵ maintained that the statement in the '573 patent was an incorporation of the '316 patent by reference and that it was “a clear, detailed citation of what is being incorporated and where it can be found,” so much so that “it is effectively part of [the'573 patent] as if it were explicitly contained therein.” As a result, it was determined that the Atlantic Richfield patent that was the basis of the rejection (the '573 patent) disclosed by itself all elements of the claims in question in the Schlumberger application and thereby anticipated the claims. The Board therefore maintained the rejection, and Schlumberger ultimately dropped the application.

6.2 Novelty in the Arrangement of Parts

When all elements of an invention are disclosed in a single prior art document, the invention will still be novel if the arrangement of the elements in the invention differs from that in the document.

The elements listed in claim 1 of Patent No. 3,945,315⁸ were the components of a hydraulic scrap-shearing machine designed to process both light-to-medium gauge metal objects and heavy gauge metal objects with a single hydraulic system. Figure 6.2A is a drawing from the patent.

The scrap-shearing machine has an open channel (9) through which scrap (12) is pushed by a ram cylinder (10) in the direction right to left, according to the view shown in the drawing. The channel (9) has a narrow mouth at its exit end (the left end), and scrap shears (not visible) are positioned just outside the narrow mouth. One side wall of the channel is formed by two “scrap-squashing” rams (15, 19) that are independently movable but driven by a common hydraulic system, the working face of the downstream ram (19) having a smaller area than the working face of the upstream ram (15). When the scrap piece (12) occupies the length of the channel, both rams move together to “squash” the scrap against the opposing wall (14) of the channel, and when the scrap is light-to-medium gauge, the two rams squash it together. When the scrap is heavy gauge, however, the upstream ram (15) is not able to squash it and therefore stops moving. The downstream ram (19), on the other hand, can exert greater pressure because of its smaller working face and therefore continues to move, squashing the leading end of the scrap piece. Once squashed, the leading end can be advanced through the channel mouth and into the open shears, and the remainder of the scrap piece is weakened by the squashing of the leading end. Ultimately, the entire scrap piece is squashed to a diameter small enough to pass through the narrow mouth and into the shears. The elements of the machine as listed in the leading claim of the patent include the following: a channel with a movable side wall divided into two longitudinal sections of different lengths, a main hydraulic ram whose working face forms the longer section, and an auxiliary hydraulic ram whose working face forms the shorter section, the auxiliary ram being operable independently of the main ram, and finally, a hydraulic system for moving the movable side wall (i.e., the two rams) against an opposing side wall.

When the patent owner, Lindemann Maschinenfabrik GmbH, sued American Hoist and Derrick Company for patent infringement, American Hoist and Derrick responded that the claim was anticipated by an earlier patent, No. 3,763,770,⁹ issued to Allied Chemical Corporation, a drawing from which is shown in Figure 6.2B. The Allied Chemical patent was directed to apparatus and method for cutting bundles of spent nuclear fuel rods into short lengths to make it easier to leach the rods in acid to extract the uranium from the rods. Admittedly, nuclear fuel rods and the bundles that they are mounted in differ considerably from heavy gauge scrap metal of the Lindemann patent, and the problems that the inventions in the two patents sought to address differ likewise. The Lindemann claim was not limited to use on metal scrap, however, but instead recited only the components and structure of the machine itself, as is typical with apparatus claims. The argument that American Hoist and Derrick made for anticipation was that, like the Lindemann patent claim, one of the structures shown in the Allied Chemical patent contained two independently actuated rams (referred to as “gags”) of different-size working faces arranged side by side, an opposing surface (referred to as an “anvil”) that the gags moved toward when a bundle was between the gags and the anvil, and a channel (referred to as a “magazine”) through which the bundles were fed to the gags and anvil to be compressed laterally. In the view shown in the drawing, only one of the gags (30) is visible, since the gags were both directed at a single point along the axis of the magazine (the horizontal elongated channel shown in the drawing) and approached the magazine from orthogonal directions (i.e., at a right angle to each other). The anvil is likewise not visible but is located below the gag (30) and behind the bundle (17).

The verdict reached at the trial court was in favor of American Hoist and Derrick, that is, holding that Lindemann's claim was anticipated by the structure shown in the Allied Chemical patent. The appeals court¹⁰ however took a closer look at the Lindemann claim and the Allied Chemical structure and concluded that the arrangement of the parts in the Lindemann claim was different enough from the arrangement of the parts in Allied Chemical that anticipation was not present. Specifically, the court observed that the two gags in the Allied Chemical structure did not form a side wall of the magazine (as in the patent claim) since they were both positioned beyond the end of the magazine. Nor did they constitute a movable wall of the magazine since while the wall of the magazine had an adjustable width, this was achieved by a movable plate (parallel to the plane of the drawing and not shown) rather than the gags, which played no part in the adjustment. Nor was the anvil in the Allied Chemical patent positioned as a side wall of the magazine. The court concluded that “[t]he [trial] court's analysis treated the claims as mere catalogs of separate parts, in disregard of the part-to-part relationships set forth in the claims and that give the claims their meaning.”

Inventions whose components are intangible rather than physical can also be novel by reason of a difference in the arrangement of their components. Examples are inventions involving the links between computers through the Internet. One such invention is that claimed in Patent No. 5,822,737,¹¹ which concerns credit card transactions conducted through the Internet and the need to provide consumers with security when purchasing goods online. Common means of online purchasing at the time involved four computers—those of the consumer, the merchant, the merchant's bank, and the bank issuing the credit card to the consumer. The invention in the patent introduced a fifth entity identified as a “payment processing” or “financial processing” entity to serve as a go-between among the other four. Use of the new entity involved downloading an encrypting software package to the consumer's computer so that the consumer's credit card number would be secure from hackers. A key claim in the patent recited a system containing five links between the various computers—one between the consumer's computer and a merchant's computer for communicating promotional material from the merchant to the consumer, a second between the consumer and the “payment processing” computer for communicating the consumer's credit card information and the purchase amount to the payment processing computer, a third between the payment processing computer and the computer of the consumer's bank for communicating the credit card information and amount to the consumer's bank and seeking authorization, a fourth between the payment processing computer and the consumer's computer for communicating transactional indicia, and a fifth between the payment processing computer and the merchant's computer for communicating the same transactional indicia. The indicia, according to the invention, are generated by the payment processing computer in a form specific to each transaction, and each link is terminated before another link is made.

When the patent was asserted in an infringement suit, this key claim was challenged as being invalid due to anticipation by a document published earlier by the Internet Engineering Task Force and IBM, entitled “Internet Keyed Payments Protocol” (which the parties referred to as “the iKP reference”). The iKP reference had been generated by representatives of the Internet industry who, like the inventor in the patent, sought to provide ways for electronic payments to be made over the Internet in a secure manner. Unlike the patent, however, the iKP reference sought to use the existing financial infrastructure for authorization and clearance of the payments, without adding additional entities. The reference presented two standard models, both involving a sequence of communications between the consumer, the merchant, the merchant's bank, and the consumer's bank, regarding the item to be purchased, the purchase price, the consumer's credit card information, and authorizations to proceed, the two models differing in terms of which communication is exchanged between which entities. Despite the reference's limitation to the use of the existing financial network, various steps in the two models were compared with each of the five links in the patent claim, although to achieve the claimed set of links, one would have to select individual steps from the two models and recombine them. The trial court found the claim anticipated nevertheless, but the appeals court disagreed,¹² stating that the reference might have anticipated a claim directed to either of the two model protocols that the reference disclosed, but it could not anticipate the system claimed in the patent. The claim was therefore declared novel.

6.3 Another Argument Against Anticipation: The “Nonenabling Reference”

A prior art document can reveal an invention or even the elements of an invention in the correct arrangement and still not anticipate the invention if the description in the document is not “enabling.” To be enabling in this context means to place the invention in the possession of the public by including enough description that the reader could reproduce the invention successfully from the description. A reference that is lacking in enablement will not support a rejection of a claim for lack of novelty.

Most of the cases in which the nonenablement argument has succeeded have involved inventions in the field of organic chemistry, particularly those claiming new chemical compounds. Courts have held that a reference disclosing a compound is not an enabling reference and therefore fails to negate the novelty of a later claim to the compound, if the reference merely shows the compound's structural formula without also describing how the compound can be made. An often-cited case¹³ is one in which the inventor's claim to new compounds was rejected over a reference that described the synthesis of a number of compounds, all except two of which were not covered by the inventor's claim. Of the two that were covered, the reference indicated that the authors' attempts at synthesis were unsuccessful. The examiner recognized this and addressed it by citing a second reference, dated 2 years after the first (although still well before the inventor's filing date), showing a different but successful synthesis process. The second reference did not disclose any of the compounds that the inventor was claiming, but the process that it disclosed was similar to the one the inventors had used successfully in preparing the compounds they were now claiming. The examiner reasoned that since the successful synthesis method was in the second reference and hence in the prior art, the skilled synthesis chemist would know how to make the two compounds shown in the first reference despite the lack of success in that reference. When the inventor challenged the examiner in court, the court held that the listing of the compounds by name in the first reference “constituted nothing more than speculation about their potential or theoretical existence. The mere naming of a compound in a reference, without more, cannot constitute a description of the compound, particularly when, as in this case, the evidence of record suggests that a method suitable for its preparation was not developed until a date later than that of the reference.”

Another case¹⁴ involving organic chemistry reached a similar result but only after the inventor's attorney submitted an affidavit by an expert. The reference in this case disclosed compounds within the scope of the invention but did not report an attempt to make them, even though it reported a process for making other compounds that were not within the scope of the invention. The affidavit stated that the process that was included in the reference would not work for the compounds that the inventor was claiming and that there were no processes that were publicly available at that time that would work, the inventor being the first to achieve success. The court agreed, overturning the examiner, and stated that for a reference to defeat the novelty of an invention, “its [the reference's] disclosure must be such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.”

Defeating a reference for lack of enablement can also occur in inventions other than those claiming new chemical compounds, although most attempts to do so do not succeed. Those that do tend to be cases where the argument is supported by expert testimony similar to the Hoeksema case. While the expert in that case was someone other than the inventor, the inventor can also be established as an expert and can submit a declaration to the same effect.

One example is Patent No. 7,521,082¹⁵ in which the invention is a process for forming a high-temperature superconducting (HTS) medium as a thin film on a metallic substrate. The compositions of the HTS film and substrate were both known, but the characteristic features of the process included reacting raw materials in the vapor phase above the substrate and depositing the product on the substrate in a process known as chemical vapor deposition (CVD) to form a superconducting thin film having a critical current and a current density above certain stated levels at a temperature of 77 K and a condition known as self-field. During examination of the application for this patent at the USPTO, some of the claims were rejected as anticipated by a patent to Arendt et al.,¹⁶ which described depositing a thin film of superconductor material on a variety of substrates including metal substrates. The Arendt patent also listed a variety of superconductor materials and a variety of deposition methods, including CVD, but the working examples in the patent used only pulsed laser deposition (PLD). The patent attorney responded to the rejection by submitting a declaration (sworn statement) by the inventor himself, listing the inventor's credentials, expertise, and 12 years' experience in research relating to high-temperature superconductors. The declaration stated that Arendt included CVD only as part of a “laundry list of deposition techniques” and that Arendt “is no more relevant than the prior art of which I was aware … and is limited to the achievement of high quality superconducting thin films by physical vapor deposition, particularly PLD.” The declaration further stated that while “there is a general interest in the art of creating high-quality superconducting thin films by chemical vapor deposition, the art has failed to even remotely enable such formation” and that he was able to achieve a successful CVD process only through “exhaustive research and development efforts over an extended period of time,” referring to his work on the apparatus and operating conditions that he ultimately used. While the declaration failed to convince the examiner, the Appeals Board reversed¹⁷ the examiner and found for the inventor, holding that “Arendt did not put the claimed method in possession of those of ordinary skill in the art, i.e., enable those of ordinary skill in the art to form, by CVD, a thin film having the claimed critical current and current density properties.”

6.4 Caution: A Reference Can Anticipate an Invention Even if It “Teaches Away” from the Invention

Many inventors have attempted to argue that their inventions are not anticipated by references that disclose their inventions but do so in a manner that “teaches away” from them, that is, references that in some way disparage the ideas that the inventors later use as the basis for their inventions. Unfortunately, these arguments do not succeed.

One example occurred in Patent Application No. 10/193,008¹⁸ of inventor Meggiolan on a device for closing a bicycle chain (the drive chain joining the pedals to the rear wheel) by linking the two ends of the chain together to form a loop. A drawing from the application is presented in Figure 6.3.

Meggiolan's invention arose because chain lengths often need adjustment to fit bicycles of different sizes and also because bicycle gears or sprockets occasionally require replacement, and this likewise entails opening and closing the chain. As bicycle riders well know, a bicycle chain consists of parallel pairs of oblong plates of a relatively wide spacing (16 in the figure) alternating with parallel pairs of plates that are closer together (18), each wider-spaced pair being joined at each of its two ends to the ends of a narrow-spaced pair in a pivot joint that gives the chain its flexibility. The pivot joint includes a rivet (30) that passes through aligned holes in both pairs of plates, and the problem that the invention was addressing was that, because of the way that the rivets were secured to the plates, the removal of a rivet to open the chain tended to cause damage to one or both of the outer plates. The chain in the Meggiolan invention featured a rivet that terminated in a “clip engagement portion” (50) that “elastically widened” the hole (36) in one of the outer plates. When the rivet was inserted first through the other three plates and then forced through the “elastically” widenable hole in the fourth plate, the clip engagement portion of the rivet engaged the rim of that hole, causing the rivet to securely join all four plates in a way that allowed them to pivot but not bend. Although not stated in the Meggiolan application, the clip engagement portion apparently also worked in reverse, leaving the “elastically” widenable hole undamaged upon both insertion and removal of the rivet.

Although the “clip engagement” construction was shown in the drawings and described in the text of the application, the claims presented the invention more broadly, as a combination of pairs of inner plates and outer plates and a pair of rivets for connecting end holes in the various plates. As a result, the application was rejected as anticipated by the description in a patent to Ta Ya Chain Co, Ltd.,¹⁹ that issued several years before. Drawings from the Ta Ya patent are shown in Figure 6.4A and B.

The Ta Ya patent addressed the same problem addressed by the Meggiolan application but proposed a different solution: the holes (8a, 8b) in Ta Ya's outer plate were compound holes formed by two eccentric but overlapping circles, one with a smaller diameter than the other, and the rivets (28a, 28b) that joined the outer plates to the inner plates each had a wide head (32a, 32b) at its leading end and a relatively narrow neck (30a, 30b) connecting the head to the shaft of the rivet. The head could only pass through the large diameter section of the hole, while the neck could pass through either section, including the small diameter section. To insert the rivet, the parts of the chain to be joined were held at a slight angle to each other to allow the head to pass through the wider portion of the hole, and when the chain was then straightened, the head shifted into position over the narrow portion, thereby securing the rivet in place. To achieve the angle needed for connecting and disconnecting, therefore, the chain had to be bent slightly out of the plane of the plates, while the rivet in the Meggiolan patent application could be installed without bending the chain. Meggiolan's attorney responded to the rejection by arguing that the Ta Ya patent “teaches away from Applicant's configuration. It is the rigidity of the adjustable links that permits their easy removal and replacement. … [I]n order to remove or replace the outer plate [in the chain in the Ta Ya patent], … the chain is bent so that the connecting pins are no longer parallel … Were these characteristics to be imparted in a ‘chain closing device' of multiple links, rigidity would be lost due to bending of the chain links with respect to each other, making removal and replacement of the chain plates more difficult.” When Meggiolan's attorney took the application up on appeal, the PTAB²⁰ rejected the argument, stating that “[t]he question whether a reference ‘teaches away' from the invention is inapplicable to an anticipation analysis.”

In another application, the inventor used the “teaches away” argument over a reference that actually described his invention but did so in a negative way, and the argument faced the same obstacle. The technology addressed by U.S. Patent Application No. 10/788,979²¹ (Applied Materials, Inc.) was integrated circuit fabrication and its use of rapid thermal processing (RTP). A drawing from the published version of the application appears in Figure 6.5.

RTP was performed by radiation heating, and the need for highly controlled and uniform heating over two-dimensional areas was increasing as the circuit features on the wafers became smaller and the wafers themselves became larger. Various features were introduced to address these needs, including zoned heating and a series of pyrometers distributed across the zoned area to provide dynamic control of the heating. In the typical arrangement, the radiation heat source was located above the wafer, directly facing the circuit features, and the pyrometers were located below, facing the back side of the wafer. The invention lay in reorienting the wafer so that the radiant heat source was directed to the back side of the wafer and the pyrometers were on the front side. In the drawing, the wafer (12) is shown upside down with its features (16) exposed on the bottom. High-intensity tungsten-halogen lamps (26) serve as the radiant heat source and are positioned above the inverted wafer, and the pyrometers (40) are positioned below, receiving signals through light pipes (42).

The reference cited against the application was a patent to Texas Instruments (TI),²² in which the same problem was addressed. The solution in the TI patent was to first generate calibration curves using a reference wafer having a known reflectivity, by determining both the amount of radiation emanating from the heat lamps and the amount reflected from the wafer to obtain real-time values for both emissivity and temperature. The figures in the patent showed the wafer face down with the heat source above, as in the claims of the Applied Chemicals application, and the text of the patent mentioned the use of standard pyrometers without showing them in the figures. The text included the following statement:

While the pyrometer can be used to image the radiation from either surface of the wafer, higher accuracy can be obtained for the unpatterned wafer backside.

The argument made by Applied Materials was that the statement, and hence the patent, “teaches the unclaimed combination of backside pyrometric monitoring and topside irradiation of an inverted wafer … [and] further teaches against frontside pyrometric monitoring of a wafer of whatever orientation.” The PTAB heard this argument on appeal²³ and responded by pointing to the phrase “from either surface of the wafer” in the TI patent. The PTAB concluded that despite the negative light in which the TI patent referred to the combination of backside irradiation and frontside pyrometric monitoring, the patent disclosed the combination nevertheless and observed that “the subject matter of a claim ‘does not become patentable simply because it has been described as somewhat inferior to some other [alternative] for the same use'.”

6.5 Novelty versus Anticipation among Genus, Subgenus, and Species

The most intricate and least apparent part of the novelty framework may be in the rules governing genera, subgenera, and species. Inventions that lie in the discovery of a genus, for example, may confront prior art in the form of a species within the genus, while inventions that lie in the discovery of a species may confront prior art in the form of a genus that includes the species. The discovery of a subgenus can raise similar issues. Which of these discoveries constitutes a novel invention?

6.6 Are We Done?

The list of comparisons presented in this chapter indicating what is considered novel and what is considered anticipated is not comprehensive—additional arguments, for and against novelty, have been made and passed on by the PTO and the courts. For example, a common mistake is to argue in favor of a machine, apparatus, device, or composition of matter by stressing that its intended use is different from that of the prior art. An intended use that is novel will not make the machine, apparatus, device, or composition of matter novel unless the novel use is somehow incorporated into the claim language to limit the structure or composition of the invention as claimed. This is but one example of overcoming a rejection for lack of novelty by narrowing the scope of the rejected claim, and this can often be done without a significant loss of coverage to the patentee. Claims can also be recast to avoid a novelty rejection in ways other than simply narrowing the scope. Many claims to articles of manufacture or compositions, for example, can be recast as claims to a process for manufacture or a method of use, that is, a method for achieving a result or effect by utilizing the article or composition.

Novelty is not a question of degree: an invention is either novel or anticipated, and if it is anticipated, the door to patentability of that invention is closed. As noted, however, novelty is only the first part of the patentability inquiry. As the next chapter will demonstrate, the difference that causes an invention to be novel can be great enough on its own that it also meets nonobviousness, and often, an explanation to that effect will suffice. In other cases, more is needed.