Join Us For Prior Art & Obviousness 2011 June 6, 2011

Prior art, 35 USC 102, continues to be a complicated concept for patent practitioners and their clients, undergoing evolving interpretations in the PTO and CAFC and even statutory reform. For every practitioner, it is a necessity to stay current on this touchstone of patentability. How does the concept of “prior art” and circumstance collide in the 21st century? How does prior art on the web impact the practice? What is here today, could be gone tomorrow, but can possibly be recovered mean in terms of prior art. And, in the age of biotech and nanotech, what is truly enabled? Is it a catalog listing, or even a peer review paper? Join us for PLI’s Prior Art & Obviousness 2011 on June 6, 2011 in New York or on July 25, 2001 in San Francisco (also available via live webcast) where you will obtain an essential working understanding of this complicated statute, including recent re-interpretations, case law, and a look at enacted or proposed statutory revisions. And let’s not overlook the most common reason any application is rejected or patent held invalid: 35 USC 103, Obviousness. KSR (already 4 years old) will be explored from inside and outside the PTO as both the CAFC and PTO try to shoehorn their past decisions into a KSRpigeon hole!

Click here for more information on Prior Art & Obviousness 2011: Current Trends in Sections 102 & 103.

We will have highlights here on the Practice Center so tune in if you can’t make the program!!

Three References PLUS Predictable Variation Doom Utility Lighter Claims

Written by Brandon Baum , of baum legal and Practice Center Contributor.

Some have suggested that the Federal Circuit’s recent decision in Tokai Corp. v. Easton Enterprises, Inc., No. 2010-1057, -1116 (Fed. Cir. Jan 31, 2011), signals a raising of the bar to show nonobviousness post-KSR.  See, e.g., Quinn, KSR Fears Realized: CAFC Off the Obviousness Deep End; Patently-O, The Teeth of KSR: Obviousness on Summary Judgment.  This author disagrees.

The technology at issue in Tokai is straightforward: a child-safety mechanism for use on a “utility lighter,” the type of lighter used to light a barbecue or pilot light. The safety mechanism consists of a spring-loaded locking lever that must be unlocked with one finger while simultaneously depressing the trigger to light the flame with another.  Although two-finger safety mechanisms had been used in prior art cigarette lighters, they had never been used with a utility lighter prior to the patentee’s application. Nevertheless, the panel majority of Judges Lourie and Bryson upheld the district court’s determination on summary judgment that the patents-in-suit were obvious. (more…)

Prosecuting Patent Applications: Establishing Unexpected Results

Today’s guest post was written by Garth M. Dahlen, Ph.D., Partner at Birch, Stewart, Kolasch & Birch, LLP.

The purpose of this article is to provide suggestions on how to effectively make a showing of unexpected results during prosecution before the U.S. Patent and Trademark Office in order to overcome a rejection based on obviousness under 35 U.S.C. §103(a).

I. General Comments

“One way for a patent applicant to rebut a prima facie case of obviousness is to make a showing of ‘unexpected results,’ i.e., to show that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected. The basic principle behind this rule is straightforward – that which would have been surprising to a person of ordinary skill in a particular art would not have been obvious.” In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995). (more…)

There is No Prior Art for My Invention

Written by Gene Quinn (of IPWatchdog and Practice Center Contributor)

I frequently am told by inventors that they have searched the marketplace and cannot find anything like their invention. I am also frequently told that they have done a patent search and cannot find anything that remotely resembles what they have come up with. While there are many reasons for not finding prior art, just because you do not find prior art does not mean that there is no prior art that needs to be considered. In fact, it would be extremely rare (if not completely impossible) for there to be an invention that does not have any relevant prior art.  Said another way, unless you have invented something on the level of an Einstein-type invention there is prior art.  Even the greatest American inventor, Thomas Edison, faced prior art for the vast majority of his inventions.

Prior art is probably best understood as information that can be used by the patent examiner to reject claims in a patent application. This information is most commonly prior publications, such as technical articles, issued patents or published patent applications. It is also possible for prior art to consist of actions, such as a sale within the United States more than 12 months prior to a patent application being filed, or public use in the United States more than 12 months prior to a patent application being file. For more on this see What is Prior Art? (more…)

US Patent Office Issues Update to KSR Examination Guidelines

Written by Gene Quinn (of IPWatchdog.com and Practice Center Contributor)

The United States Patent and Trademark Office has provided an update to its Examination Guidelines concerning the law of obviousness under 35 U.S.C. 103 in light of precedential decisions from the United States Court of Appeals for the Federal Circuit issued since the 2007 decision by the United States Supreme Court in KSR Int’l Co. v. Teleflex Inc. The Updated KSR Examination Guidelines were published today in the Federal Register, and in response to the requests of many stakeholders the USPTO has included additional examples to help elucidate the ever-evolving law of obviousness. These guidelines are intended primarily to be used by Office personnel in conjunction with the guidance in the Manual of Patent Examining Procedure. The effective date of the these new Guidelines is September 1, 2010, but members of the public are invited to provide comments on the 2010 KSR Guidelines Update.  The Office is especially interested in receiving suggestions of recent decisional law in the field of obviousness that would have particular value as teaching tools.

The Examination Guidelines Update correctly explains that every question of obviousness must be decided on its own facts, thus it is the intent of the Office to “clarify the contours of the obviousness inquiry after KSR, and help to show when a rejection on this basis is proper and when it is not.”   The 2010 KSR Guidelines Update provides a ‘‘teaching point’’ for each case discussed, and there is a table listing many of the cases and their teaching points, which can be found on the last two pages of the roughly 17 page Federal Register Notice. Perhaps this table was intended to be all inclusive, but I do not see, for example, Ball Aerosol v. Limited Brands, 555 F.3d 984 (Fed. Cir. 2009) in the table. (more…)