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Technology Stocks : Ampex Corporation (AEXCA)
AMPX 12.57-7.4%2:58 PM EST
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To: Hal Campbell who wrote (16)6/20/1997 3:03:00 AM
From: Merlin   of 17679
 
Hal,

In order for an invention to be patentable it must have utility, be novel, and be unobvious. Utility is usually easy to establish. In order to establish novelty, the patent examiner searches the prior art to see if the invention is sufficiently different from anything preceding it. The prior art consists of all previous patents and literature that are available to the public. To establish unobviousness, the examiner considers whether or not the invention could have been anticipated by a person "normally skilled in the art". The examiner may cite two (or more) prior patents in combination in order to reject an invention as unpatentable.

The specification is the part of patent application that describes the invention and the best mode of practicing it. The specification should provide enough detail so that a person "normally skilled in the art" can practice the invention. The claims that are written on the specification describe in strict language the invention that is being patented. It is not unusual for all claims in a patent application to be rejected in the first office action, and then have a set of amended claims allowed. It is the set of claims that describes the intellectual property.

In the article referenced by Gus, an example of the doctrine of equivalents is provided in which a claim refers to a pH range of 6.0 to 9.0 and the infringing process used a pH of 5. Although the pH of 5 is clearly outside of the claim, the doctrine of equivalents was invoked since the pH of 5 did not make the infringing process different in any material way, and therefore it was held to be equivalent. The doctrine of equivalents makes it difficult for someone to circumvent a patent by adding some superfluous element to prevent the claims of a patent from reading directly on the object or process in question.

Regards,

Merlin
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