Secondary Considerations Succeed at the PTAB

In a rare instance of relying on secondary considerations to overcome an allegation of obviousness, the Patent Trial and Appeals Board refused to institute an Inter Partes Review of U.S. Patent No. 8,550,271, directed to a crimp-o… Read More

PTAB Broadest Reasonable Interpretation: “in response to” Means “subsequent to”

In an ex parte appeal, the PTAB upheld the Examiner’s broadest reasonable interpretation of the patent claim language “in response to” as merely meaning “subsequent to.”  The decision is Ex parte Youngri Kim et al. (PTA… Read More

A Federal Circuit Reminder on the Limits of Obviousness

The circumstances are few in which “common sense” can substitute for a claim limitation missing from the prior art in an obviousness rejection under 35 U.S.C. § 103, the Federal Circuit explained in Arendi S.A.R.L. v. Apple,… Read More

Federal Circuit Revisits Secondary Considerations and Effect of Age of Cited References under Section 103

The Federal Circuit recently clarified the suitability of certain types of evidence in analyses of patentability under section 103. Nike, Inc. v. Adidas AG, No. 2014-1719 (Fed. Cir. February 11, 2016) (opinion by Judge Chen, joine… Read More

When Is a Document on the Internet a “Printed Publication?”

Addressing an issue with which patent litigators and prosecutors alike regularly grapple, the Federal Circuit recently held that a graduate student’s report, provided on her personal web page, was not a “printed publication”… Read More

Federal Circuit Provides a Lesson on How Not to Rebut an Obviousness Rejection

Has the Federal Circuit made it more difficult to rebut obviousness rejections by demonstrating that the cited references teach away from the claimed invention? One way to show that references teach away from a claimed invention i… Read More

PTAB Reverses Rejection Because Patent Examiner Applied a “Broader Than Reasonable Interpretation”

Patent examiners often rely on claim interpretations that seem ridiculous to applicants. Here is a case showing that applicants should push back in such situations when claims are rejected under a “broadest reasonable interpreta… Read More

Beware: An Enabling Specification Can Also Enable Prior Art

The Federal Circuit has held that a prior art reference was enabled in part because admissions in an applicant’s own specification explained what would have been known to one of ordinary skill in the art.  In re Morsa, No.… Read More

PTAB Reverses Obviousness Rejection because Nothing “Ties” Approaches of Prior Art References Together

In Ex parte Gilbert (Appeal 2012/005795; App. No. 11/200,749), the Patent Trials and Appeals Board (PTAB) held that the Examiner had not established that one of ordinary skill in the art would have had an apparent reason to combin… Read More

Usenet Post Qualifies as "Printed Publication" Prior Art

A post to an Internet newsgroup nine months before the priority date of U.S. Patent No. 6,081,835 qualified as a “printed publication” that could be used as invalidating prior art.  Suffolk Technologies, LLC v. AOL, Inc., No.… Read More