Nanotechnology Law & Business
Courts have long held that merely changing the scale of a prior art device does not create a patentable invention. However, nanoscale properties are governed by quantum mechanical interactions that do not exist on a macroscale. When viewed in this light, in some circumstances macroscale prior art may be inapplicable to nanoscale devices. Thus, the application of macroscale prior art in a rejection of a nanoscale invention creates unique issues during patent prosecution. Further, because of the seemingly random effects of quantum mechanical interactions, combining nanoscale prior art with other nanoscale prior art to show obviousness under Section 103 raises questions about whether such a combination would be apparent to a person of ordinary skill in the art. This article discusses anticipation and obviousness rejections of nanoscale inventions in depth, based on a review of granted patents and their prosecution histories. It also provides guidance for avoiding or minimizing rejections and for addressing them should they arise during prosecution.