Friday, May 25, 2007

Post KSR Principles of Law


“[T]he examiner bears the initial burden, on review of the prior art or any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).

To satisfy the written description requirement of 35 U.S.C. § 112, ¶1, the disclosure of the application as originally filed must reasonably convey to any person skilled in the relevant art that the applicants, as of the filing date of the original application, had possession of the claimed invention. In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).

A claim is definite, and thus complies with 35 U.S.C. § 112, ¶2, if it would have reasonably apprised one skilled in the relevant art of its scope. Amgen, Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991). Claim definiteness is not analyzed “in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). That is, a claim complies with the second paragraph of Section 112 if, when read in light of the specification, it would have reasonably apprised those skilled in the relevant art of the scope of the invention. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986).

The factual inquiry into whether claimed subject matter would have been obvious includes a determination of: (1) the scope and content of the prior art; (2) the differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) secondary considerations (e.g., the problem solved) that may be indicia of (non)obviousness. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).

Recently, the Supreme Court of the United States stated that the “analysis [of whether the subject matter of a claim would have been obvious] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v.. Teleflex, Inc., 127 S. Ct. 1727, ___, 82 USPQ2d 1385, 1396 (2007); see also DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”); In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980)(“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07, 160 USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom...”).

“When the PTO shows prima facie obviousness, the burden then shifts to the applicant[s] to rebut.” In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir. 1997). “Such rebuttal or argument can consist of a comparison of test data showing that the claimed compositions possess unexpectedly improved properties or properties that the prior art does not have...” In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc).


I. Written Description: Claims 5, 10, 15, and 20 ...

source: here


Step Back said...

"To do so would run counter to common sense of a person of ordinary skill in the art and the purpose of using the phase change material since the insulation layers would prevent the phase change material from performing its desired cooling function. Thus, contrary to the Examiner’s contentions at page 4 of the Answer, we determine that a person having ordinary skill in the relevant art would not have been led to the claimed subject matter within the meaning of 35 U.S.C. § 103." --Ex parte WILLIAM N. MAYER

Step Back said...

More Principles of Law from here:

In establishing a case of obviousness, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant art to combine the elements of the prior art references in the way the claimed invention has. KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). In evaluating prior art references, it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See In re Kahn, 441 F.3d 977, 987, 78
9 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention).
Any need or problem known in the field of endeavor at the time of the invention and addressed by the prior art can provide a reason for combining elements in the manner claimed. KSR Int’l, 127 S.Ct. at 1742, 82 USPQ2d at 15 1397.
An appellant who is asserting unexpected results to support a contention of nonobviousness bears the burden of proof of establishing the results are unexpected. See In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972) and In re Freeman 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973).
When unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected as compared with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392, USPQ2d 1281, 1285 (Fed. Cir. 1991), citing In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
An appellant who is asserting commercial success to support a contention of nonobviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of commercial success.
Objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 792, 171 USPQ 294, 294 (CCPA 1971). In order to be commensurate in scope with the claims, the commercial success must be due to claimed features, and not due to unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F.Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C. 1990), aff’d, 959 F.2d 226, 228, 22 USPQ2d 1153, 1156 (Fed. Cir. 1992).
Our reviewing court has noted in the past that evidence related solely to the number of units sold provides a very weak showing of commercial success, if any. See In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 888 (Fed. Cir. 1985) (finding that sales of 5 million units represent a minimal showing of commercial success because "[w]ithout further economic evidence ... it would be improper to infer that the reported sales represent a substantial share of any definable market"); see also Baxter Travenol Labs., 952 F.2d at 392, 21 USPQ2d at 1285 (Fed. Cir. 1991) ("[I]nformation solely on numbers of units sold is insufficient to establish commercial success."); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed. Cir. 1983) (determination of obviousness not erroneous where evidence of commercial success consisted solely of number of units sold and where no evidence of nexus). A nexus is required between the sales and the merits of the claimed invention. In ex parte proceedings before the Patent and Trademark Office, an applicant must show that the claimed features were responsible for the commercial success of an article if the evidence of nonobviousness is to be accorded substantial weight. Merely showing that there was commercial success of an article which embodied the invention is not sufficient. See Ex parte Remark, 15 USPQ2d 1498, Appeal 2006-1708 Application 10/186,253 1502-03 (Bd. Pat. App. & Inter. 1990). Compare Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392, 7 USPQ2d 1222, 1226 (Fed. Cir.), cert. denied, 488 U.S. 956 ( 1988). See also Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985) (commercial success may have been attributable to extensive advertising and position as a market leader before the introduction of the patented product); In re Fielder, 471 F.2d 640, 646, 176 USPQ 300, 305 (CCPA 1973) (success of invention could be due to recent changes in related technology or consumer demand; here success of claimed voting ballot could be due to the contemporary drive toward greater use of automated data processing techniques).
To support a rejection of a claim under 35 U.S.C. § 102(b), it must be shown that each element of the claim is found, either expressly described or under principles of inherency, in a single prior art reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).

Anonymous said...

There is no evidence in this record that an artisan would have considered the advantages taught by Jackson and Uchida to be outweighed by the difficulty and expense of providing Kawate with Jackson’s bend lines or Uchida’s V-shaped grooves. Regardless, the possibility that the Examiner’s proposed combination would not have been made by businessmen for economic reasons does not mean that persons skilled in the art would not have made this combination. In re Farenkopf, 713 F.2d 714, 718, 219 USPQ 1, 4 (Fed. Cir. 1983).

... Ex parte DAVID CLEMENS

Anonymous said...

May 2007 post-KSR score card:
See this link at Zura's 271 blog

Step Back said...

But, one skilled in the art is more like a fox than an ostrich and would be aware of, and not ignore with its head in the sand, its surroundings—in this case all of the disclosure in Roe and Elder.

Anonymous said...

Read Section 103! The question under Section 103 is not whether the "claimed subject matter" is obvious. (That view of the question puts the cart before the horse to eliminate the horse.) As Section 103 is careful to make clear, and the Court's decision in KSR missed, the statutory question under 103 is whether, in view of the differences between the claimed subject matter and the prior art, the "claimed subject matter as whole" would have obvious to the PHOSITA at the time of the invention. The "claimed subject matter as a whole" includes much more than the just the claimed elements or "claimed subject matter." Do your research and you will see that this is and has long been so and that this is one reason much of the reasoning in KSR is incorrect.