CHAPTER 1 - STUDY MATERIALS

The Scholar - Patent Law Edition

ABSTRACT

Athelia Winters, a graduate student at Ponderosa University, spends her days in the library basement researching "intellectual property protection in pre-classical mythology." She discovers four ancient source texts—Greek, Norse, Celtic, and Ancestral Puebloan—that all describe identical patent examination systems, using precise legal terminology that mirrors modern 35 U.S.C. requirements.

The texts describe Guardian Queen examiners, patent agents ("warriors"), examination centers divided by technology area, and complete prosecution procedures including novelty (§ 102), utility (§ 101), non-obviousness (§ 103), enablement and definiteness (§ 112). Most significantly, they reference Walnut Canyon—40 minutes from campus—as an ancient examination center with cliff dwellings that served as examiner and agent offices.

Athelia discovers documentation of a pending patent application filed by the "First Woman" thousands of years ago that is about to abandon. Twenty-three others attempted continuation applications; all failed. She has 72 hours to decide whether to attempt filing before the deadline expires.

This chapter teaches the foundational structure of patent law through Athelia's research methodology: cross-referencing multiple sources, identifying consistent patterns, understanding prior art, and recognizing that patent examination requires specialized knowledge organized by technology center.

SUMMARY - PATENT LAW CONCEPTS TAUGHT

1. Prior Art Research and Documentary Evidence

Athelia's research methodology mirrors patent prior art searches:

Multiple sources: Greek, Norse, Celtic, Ancestral Puebloan texts (like searching multiple databases: USPTO, foreign patents, non-patent literature)
Cross-referencing: Finding consistent patterns across independent sources strengthens evidence
Documentary evidence: Ancient texts serve as "prior art" documenting examination systems that existed before modern USPTO
Burden of proof: Athelia must prove these systems existed through credible evidence

2. The Three Core Patentability Requirements

All four ancient texts describe the same three-part test:

35 U.S.C. § 101 - Utility: "Invention must have utility" (Greek: "innovations pass from chaos to order")
35 U.S.C. § 102 - Novelty: "Is it novel against prior art?" (Norse: "genetic arts meet prior art")
35 U.S.C. § 103 - Non-obviousness: "Would it be obvious to one skilled in the art?" (Ancestral Puebloan text)

3. Specification Requirements (§ 112)

Ancient texts describe two critical specification requirements:

§ 112(a) Enablement: "Specification must enable" (Celtic), "Enablement is proven" (Norse)
§ 112(b) Definiteness: "Claims must be definite" (Celtic), "Strong claim" requires precision (Norse)

4. Patent Office Structure - Technology Centers

Norse fragment reveals USPTO-like organizational structure:

Multiple examination centers divided by technology type
Specialized examiners: "Each center examines what it knows" - examiners must have expertise in their art
Technology Centers: Genetic (biotech), Territorial (mechanical), Transformation (software/AI), Hybrid (compositions)
Real USPTO parallel: 9 Technology Centers (TC 1600 = Biotech, TC 2100 = Computer, etc.)

5. Patent Agents vs. Examiners (Dual Roles)

Ancestral Puebloan text describes complete prosecution system:

Warriors (Patent Agents): Draft specifications, represent inventors, argue with examiners
Elders (Examiners): Review applications, test against §§ 101/102/103/112, grant or reject
Physical separation: Upper chambers (examiners) vs. lower chambers (agents) - adversarial but collaborative system
37 C.F.R. § 11.1: Patent agents must pass registration exam (USPTO Patent Bar)

6. Continuation Applications and Abandonment Deadlines

The pending application creates prosecution urgency:

35 U.S.C. § 120: Continuation applications must be filed before parent application abandons or issues
Abandonment pressure: 72-hour deadline (in story) mirrors real prosecution time pressure
23 failed attempts: Prior applicants lacked required qualifications (genetic match = technical expertise requirement)
Strategic decision: Athelia must decide whether to file based on incomplete evidence

7. Three Branches of Examination

Celtic text describes "three branches" represented by eye colors:

Emerald eyes = Examination: Initial examination under § 131 (examiner authority)
Silver eyes = Balance: Appeals/review (PTAB - Patent Trial and Appeal Board)
Black eyes = Consumption: Prior art search/comparison (destroying novelty claims)

8. Walnut Canyon as Examination Center

Physical evidence of ancient patent office:

Cliff dwellings: Not agricultural shelters—examination chambers and agent offices
Disappeared circa 1300 CE: Examination center closed but barrier may persist
40 minutes from campus: Testable hypothesis (Athelia can physically visit)
Documentary + physical evidence: Combining textual research with archaeological site

DISCUSSION QUESTIONS

1. Research Methodology and Prior Art Searching

Athelia cross-references four independent ancient sources (Greek, Norse, Celtic, Ancestral Puebloan) to establish that patent examination systems existed in antiquity. How does her research methodology mirror the prior art search process that patent examiners conduct under 35 U.S.C. § 102?

Consider:

Why is finding consistent patterns across independent sources more credible than a single reference?
How does Athelia's use of "documentary evidence" parallel an examiner citing non-patent literature as prior art?
What would an examiner need to prove to establish that these ancient texts constitute prior art under § 102(a)(1)?

2. The Three Core Requirements - Why This Structure?

Every ancient text Athelia discovers describes the same three-part patentability test: utility (§ 101), novelty (§ 102), and non-obviousness (§ 103). Why does patent law require all three? What would happen if only one or two requirements existed?

Consider:

Utility alone: Could you patent gravity? The sun? Things that are useful but not invented by you?
Novelty alone: Could you patent obvious combinations? "A chair... but BLUE!"?
Non-obviousness alone: Could you patent something that already exists if it's clever enough?
How do all three requirements work together to define what deserves patent protection?

3. Technology Centers and Examiner Expertise

The Norse fragment reveals that ancient examination centers were "divided by art"—genetic innovations examined separately from mechanical, transformation, or hybrid compositions. Why does the USPTO organize examiners into Technology Centers by field of expertise?

Consider:

What problems would arise if a biotech examiner reviewed software patents?
Why does 35 U.S.C. § 103 require assessing obviousness from the perspective of a "person having ordinary skill in the art" (PHOSITA)?
How does examiner specialization affect the quality of patent examination?
What happens when an invention crosses multiple technology areas (like AI-biotech hybrids)?

4. Patent Agents vs. Examiners - Adversarial or Collaborative?

The Ancestral Puebloan text describes "Warriors" (patent agents) working in lower chambers and "Elders" (examiners) in upper chambers. The Warriors "argue" on behalf of inventors while Elders "judge." Is patent prosecution adversarial (like litigation) or collaborative (working toward accurate patent grants)?

Consider:

What is a patent agent's duty to their client vs. their duty to the Patent Office?
Can an agent ethically argue for a patent they believe shouldn't be granted?
Why does the USPTO require agents to pass an exam demonstrating legal and ethical knowledge (37 C.F.R. § 11.1)?
How does the adversarial process actually improve patent quality?

5. Deadlines and Strategic Decision-Making

Athelia faces a 72-hour deadline to file a continuation application before the parent abandons (35 U.S.C. § 120). She has incomplete evidence: ancient texts suggest she may have the required "genetic match," but she has no way to test this scientifically. Should she file based on circumstantial evidence, or wait for more proof and risk missing the deadline?

Consider:

What are the consequences of filing when you're not sure you meet the requirements?
What are the consequences of missing the deadline?
In real patent prosecution, applicants face statutory deadlines (6 months to respond to Office Actions, 12 months for provisional-to-non-provisional conversion). How do these deadlines affect strategic decisions?
When is it appropriate to file a "placeholder" application (provisional under § 111(b)) vs. a full non-provisional (§ 111(a))?

REAL CASE LAW PATENT STUDY

In re Wyer, 655 F.2d 221 (C.C.P.A. 1981)

COURT: United States Court of Customs and Patent Appeals (predecessor to Federal Circuit)

STATUTE(S):

35 U.S.C. § 102 - Conditions for patentability; novelty and loss of right to patent
35 U.S.C. § 103 - Conditions for patentability; non-obvious subject matter
35 U.S.C. § 131 - Examination of application

FACTS:

Wyer filed a patent application claiming a method for updating and retrieving stored data using a computer system. The method involved maintaining records with control numbers and using algorithms to access specific data efficiently.

The patent examiner rejected the claims under 35 U.S.C. §§ 102 and 103, citing prior art references that disclosed similar data management systems. The examiner argued that the claimed method was either anticipated (all elements present in prior art) or obvious (predictable combination of known elements).

Wyer appealed, arguing that:

The prior art references cited by the examiner did not disclose all elements of the claimed method;
The examiner failed to establish a prima facie case of obviousness by showing why a person having ordinary skill in the art (PHOSITA) would combine the references;
The examiner's search was inadequate—better prior art may exist, but the cited references don't support the rejection.

ISSUE:

Primary Issue: What is the examiner's burden when establishing a prior art rejection under §§ 102/103?

Specific Questions:

Must the examiner find the "best" prior art, or just sufficient prior art to support a rejection?
If an applicant argues that better prior art exists but wasn't cited, does that defeat the examiner's rejection?
What quality of evidence must the examiner provide to establish a prima facie case of unpatentability?

HOLDING:

The Court held that the examiner's burden is to establish a prima facie case of unpatentability based on the prior art actually cited—not to find every possible prior art reference or the "best" reference.

Key Rulings:

Examiner's duty: Conduct a reasonable search and cite prior art that supports the rejection. The examiner is not required to find all prior art or the closest prior art.
Applicant's burden: Once the examiner establishes a prima facie case, the burden shifts to the applicant to prove patentability (by distinguishing prior art, showing unexpected results, etc.).
Adequacy of search: An applicant cannot defeat a rejection merely by arguing that better prior art might exist. The rejection stands or falls on the cited references.
Standard of review: If the cited prior art supports the rejection under §§ 102/103, the examiner has met their burden—even if other uncited art might support a stronger rejection.

REASONING:

Why the Examiner's Burden is "Prima Facie" (Not Absolute):

The Court explained that patent examination is a burden-shifting process:

Step 1: Examiner conducts prior art search and makes initial determination of patentability.
Step 2: If examiner finds prior art supporting rejection, examiner establishes prima facie case (sufficient on its face).
Step 3: Burden shifts to applicant to prove why the prior art doesn't defeat patentability.
Step 4: Applicant can overcome by: showing prior art lacks claim elements (§ 102), demonstrating unexpected results or secondary considerations (§ 103), or amending claims to avoid prior art.

Policy Rationale:

The Court noted several practical reasons for this standard:

Impossibility of exhaustive search: No examiner can find every piece of prior art. Requiring the "best" reference would make examination impossible.
Applicant's superior knowledge: Applicants know their invention better than examiners. If better prior art exists distinguishing the invention, applicant should identify it.
Efficiency: Examination must be completed in reasonable time. Requiring exhaustive searches would paralyze the Patent Office.
Burden-shifting fairness: Once examiner shows the invention appears unpatentable based on available evidence, applicant has opportunity to prove otherwise.

What "Prima Facie" Means in Practice:

For § 102 anticipation, examiner must show:

A single prior art reference disclosing every element of the claimed invention;
The reference is enabling (teaches PHOSITA how to practice the invention);
The disclosure is in an accessible form (published, publicly used, etc.).

For § 103 obviousness, examiner must show:

Prior art references that collectively disclose all claim elements;
A reason why PHOSITA would combine the references (teaching, suggestion, motivation);
That the combination would produce predictable results.

If the examiner provides this evidence, the burden shifts. Applicant cannot defeat the rejection by merely saying "you didn't search hard enough" or "better prior art might exist." Applicant must actually distinguish the cited art or prove non-obviousness.

CONNECTION TO CHAPTER 1:

Athelia's research in Chapter 1 mirrors both sides of the Wyer burden-shifting framework:

Athelia as "Examiner" - Searching for Prior Art

Athelia conducts a prior art search across multiple sources:

Greek texts (one reference)
Norse fragments (second reference)
Celtic sources (third reference)
Ancestral Puebloan petroglyphs (fourth reference)

She cross-references these sources and finds consistent patterns—all four independently describe:

Guardian examiners testing claims
Three-part patentability test (utility, novelty, non-obviousness)
Specification requirements (enablement, definiteness)
Examination centers divided by technology area
Patent agents ("warriors") representing inventors

Under Wyer, has Athelia established a prima facie case that ancient patent systems existed?

Yes, if:

The four sources are credible (authenticated, properly translated, not fabricated);
The sources are independent (not copying from each other);
The descriptions are detailed enough to "enable" understanding of how the system worked;
The consistent patterns across sources support the conclusion (like combining multiple prior art references under § 103).

Athelia has done what an examiner must do: conduct a reasonable search, find credible references, and show they support her conclusion. Under Wyer, she doesn't need to find every ancient text mentioning patent systems—just enough to establish her case.

Athelia as "Applicant" - Preparing for Opposition

But Athelia is also preparing to file a continuation application for the Guardian Queen patent. That makes her the applicant, not the examiner.

From the applicant's perspective, Wyer teaches that she must be ready to:

Distinguish her application from the 23 failed attempts: Why does she succeed where others failed? (Answer: genetic match = technical qualifications)
Overcome anticipated rejections: If an examiner argues "Guardian Queen examination already exists in prior art," she must show what's novel about her version.
Provide evidence, not just argument: She has ancient texts, physical evidence (Walnut Canyon site), and documented failed attempts—all supporting her case.
Cannot rely on "you didn't search enough": If the examiner cites prior art rejecting her claims, saying "you missed other references" won't work. She must prove why the cited art doesn't apply.

The Strategic Parallel

Wyer (Patent Examination)	Athelia (Chapter 1 Research)
Examiner searches prior art	Athelia searches ancient texts
Cites references supporting rejection	Cites 4 independent sources (Greek, Norse, Celtic, Puebloan)
Establishes prima facie case (burden shifts to applicant)	Establishes consistent pattern (ancient patent systems existed)
Applicant must distinguish prior art or show unexpected results	Athelia must show what makes her continuation application different from 23 failed attempts
"You didn't search hard enough" is not a valid response	Finding 4 independent sources is sufficient—doesn't need every ancient text ever written

Key Lesson from Wyer:

Patent examination is a burden-shifting process. The examiner doesn't need perfect prior art—just sufficient evidence to establish a prima facie case. Once established, the applicant must prove patentability.

Athelia understands this instinctively: she's gathered enough evidence to support her hypothesis (ancient patent systems existed), and now she must decide whether to file her continuation application before the deadline—knowing she'll face examination and must prove her case.

ANALYSIS QUESTIONS

1. Applying the Prima Facie Standard:

Athelia has found four independent ancient sources describing patent examination systems. Under the Wyer standard, has she established a prima facie case that these systems existed? What additional evidence would strengthen her case? What evidence could defeat it?

In your answer, consider:

Credibility of sources (are they properly authenticated and translated?)
Independence (could the sources be copying each other?)
Consistency (do they describe the same system or different systems?)
Enablement (do they teach enough detail to understand how the system worked?)

2. Burden-Shifting in Prosecution:

When Athelia files her continuation application, an examiner will likely cite the Original Guardian Queen's system as prior art under § 102. Under Wyer, the examiner only needs to establish a prima facie case—not prove that Athelia's application is identical to the original.

What evidence can Athelia present to overcome this rejection? Consider:

The 23 failed continuation attempts (proving what?)
Her genetic match (is this a claim element or an enablement requirement?)
Differences between her approach and the Original Queen's system
The fact that the original examination center closed in 1300 CE (does this matter for novelty analysis?)

3. Research Methodology and Patent Searching:

Athelia conducts her research by:

Searching multiple databases (library basement, Section 7, Row M)
Cross-referencing independent sources from different cultures/time periods
Looking for consistent patterns that suggest a common underlying system
Combining documentary evidence with physical evidence (Walnut Canyon site)

How does this methodology mirror best practices for patent prior art searching? If you were a patent examiner searching for prior art related to "biological examination systems with genetic authentication," what search strategy would you use? How would Wyer guide your search?

FULL STATUTORY TEXT

Complete text of all statutes referenced in Chapter 1

35 U.S.C. § 101 - Inventions patentable

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

35 U.S.C. § 102 - Conditions for patentability; novelty

(a) NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) EXCEPTIONS.—

(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) DISCLOSURES APPEARING IN APPLICATIONS AND PATENTS.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

(A) the subject matter disclosed was obtained directly or indirectly from the inventor or a joint inventor;

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

35 U.S.C. § 103 - Conditions for patentability; non-obvious subject matter

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

35 U.S.C. § 112 - Specification

(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.

(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

(c) FORM.—A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.

(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.

(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

35 U.S.C. § 120 - Benefit of earlier filing date in the United States

An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385, which names an inventor or joint inventor in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this section.

35 U.S.C. § 131 - Examination of application

The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.

37 C.F.R. § 11.1 - Definitions

As used in this part, except where the context otherwise requires:

Practitioner means an individual who is either a registered patent attorney or a registered patent agent registered to practice before the Office in patent matters under § 11.6.

Practice before the Office comprises:

(1) Prosecuting or aiding in the prosecution of applications for patents before the Office or before the Office and the boards of appeals, including a petition to the Director to accept a delayed payment of the issue fee under § 1.137(b) of this chapter, a petition to the Director to expressly abandon an application to avoid publication under § 1.138(c) of this chapter, or a petition to the Director to withdraw an application from issue under § 1.313(c) of this chapter, but not including the filing of an application for patent, or a provisional application for patent, or the filing of or prosecution of international applications as defined in § 1.9(b) of this chapter unless it also includes the amendment or prosecution of international applications after they have entered the national stage under 35 U.S.C. 371 or unless it includes the filing of a demand for international preliminary examination, or the filing of a response to any filing receipt, notice to file missing parts of a nonprovisional application, notice to file missing parts of a provisional application, or any other notice issued by the Office relating to an application for patent or a provisional application for patent;

(2) Prosecuting or aiding in the prosecution of reexamination proceedings, supplemental examination proceedings, post-grant proceedings under the America Invents Act, or correcting or perfecting a patent before the Office or before the Office and the Patent Trial and Appeal Board;

(3) Providing advice, consultation, or assistance to a client in matters pending before the Office, including advice and representation in connection with a petition for the revival of an application, patent, or reexamination proceeding, and in connection with the reinstatement of reexamination proceedings, or any other petition filed in a matter pending before the Office.

[End of Chapter 1 Study Materials - Continue to Chapter 2]