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

Wednesday, May 16, 2007

Obvious as the Light Passing through the Donut Hole

Here is part of what the BOPAI ruled in Ex parte PEEYUSH MAHESHWARI, et al

Appellants do not take issue with the Examiner’s legal conclusion that it would have been obvious for one of ordinary skill in the art, based on Bongiovanni, to add cornmeal to the dough of Hayes-Jacobson. Also, Appellants make no argument that it would have been nonobvious, based on the disclosures of Lee and Pesheck and the state of the prior art, to add bread crumbs to the product of Hayes-Jacobson. Rather, the sole argument advanced by Appellants is that none of the references provides “any insight or instruction to one of skill in the art that the inclusion of bread crumbs inside a pre-cooked dough will help to reduce boil-out of an internal filling during microwave heating of a microwavable dough product”

More of what the Board held:

[I]n the present case, the fact that Appellants may have discovered a new advantage for adding bread crumbs to the filling of a dough product does not result in the metamorphosis of an obvious food composition comprising bread crumbs into a different, nonobvious composition. Significantly, Appellants have not proffered any objective evidence which establishes unexpected results attributed to the addition of bread crumbs into the filling of the dough product of Hayes-Jacobson, let alone evidence of sufficient probative value to outweigh the obviousness of doing so. See In re May, 574 F.2d 1082, 1092, 197 USPQ 601, 609 (CCPA 1978); In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA 1977).

Wednesday, May 2, 2007

Ob Via

I'm not a Latin scholar. Nonetheless, the root word "ob" apparently means to come directly upon, to face against such that it is easily within reach. The root word "via" means way or path.

The combined term, obviam or "obvious" comes to mean the path or way that is directly in front of you and hence makes it easy to know what your next step forward should be.

Among the many dictionary defintions is this one: easily discovered, seen, or understood (Merriam Webster's)

Some more enlightening definitions: Easily perceived or understood; quite apparent. See synonyms at "apparent"; Easily seen through because of a lack of subtlety; transparent: an obvious political ploy. ETYMOLOGY: From Latin, from obviam, in the way, within reach : ob-, against; see ob– + viam,