tag:blogger.com,1999:blog-4831263988895973669.post4846590014378608762..comments2023-10-07T01:32:12.525-07:00Comments on PATENTly - unOBVIOUS: Post KSR Principles of LawStep Backhttp://www.blogger.com/profile/06178091823442339760noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-4831263988895973669.post-6109757964799939162010-09-01T09:03:18.523-07:002010-09-01T09:03:18.523-07:00Read Section 103! The question under Section 103 ...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.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4831263988895973669.post-8413301287217820102007-07-03T02:21:00.000-07:002007-07-03T02:21:00.000-07:00But, one skilled in the art is more like a fox tha...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.<BR/><A HREF="http://des.uspto.gov/Foia/ReterivePdf?flNm=fd2007282506-29-2007-0.pdf" REL="nofollow">Ex parte JOHN LEE HAMMONS</A>Step Backhttps://www.blogger.com/profile/06178091823442339760noreply@blogger.comtag:blogger.com,1999:blog-4831263988895973669.post-79367294072912586932007-06-04T14:08:00.000-07:002007-06-04T14:08:00.000-07:00May 2007 post-KSR score card:See this link at Zura...May 2007 post-KSR score card:<BR/>See <A HREF="http://271patent.blogspot.com/2007/06/ksr-and-bpai-analysis-of-appeals-for.html" REL="nofollow">this</A> link at Zura's 271 blogAnonymousnoreply@blogger.comtag:blogger.com,1999:blog-4831263988895973669.post-4761783456094461632007-06-01T08:11:00.000-07:002007-06-01T08:11:00.000-07:00There is no evidence in this record that an artisa...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).<BR/><BR/>... <A HREF="http://des.uspto.gov/Foia/ReterivePdf?flNm=fd2007010206-01-2007.pdf" REL="nofollow">Ex parte DAVID CLEMENS</A>Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-4831263988895973669.post-35405823555071184872007-05-31T05:21:00.000-07:002007-05-31T05:21:00.000-07:00More Principles of Law from here:23 PRINCIPLES OF ...More Principles of Law from <A HREF="http://des.uspto.gov/Foia/ReterivePdf?flNm=fd2006170805-30-2007.pdf" REL="nofollow">here</A>:<BR/><BR/><BR/>23 PRINCIPLES OF LAW<BR/>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. <B>KSR Int’l v. Teleflex Inc.</B>, 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).<BR/>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 <B>In re Kahn</B>, 441 F.3d 977, 987, 78<BR/>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).<BR/>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.<BR/>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).<BR/>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).<BR/>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.<BR/>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).<BR/>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. <B>See Ex parte Remark</B>, 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).<BR/>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).Step Backhttps://www.blogger.com/profile/06178091823442339760noreply@blogger.comtag:blogger.com,1999:blog-4831263988895973669.post-84977486876665379092007-05-27T05:31:00.000-07:002007-05-27T05:31:00.000-07:00"To do so would run counter to common sense of a p..."To do so would run <B>counter to common sense of a person of ordinary skill</B> 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." --<A HREF="http://des.uspto.gov/Foia/ReterivePdf?flNm=fd2007040305-16-2007.pdf" REL="nofollow">Ex parte WILLIAM N. MAYER</A>Step Backhttps://www.blogger.com/profile/06178091823442339760noreply@blogger.com