Posts Tagged: "obvious"

Petition for En Banc Review Asks Federal Circuit for Clarity on Single Reference Obviousness

The focus of the appeal is the need for clarity with respect to hopelessly irreconcilable caselaw on the issue of single reference obviousness… Decisions from the Federal Circuit have created an irreconcilable split within the Federal Circuit itself regarding the proper approach to obviousness determinations, American Vehicular Sciences argues. Indeed, many commentators (ourselves included) have noticed that now more than ever on a variety of issues the outcome of a decision at the Federal Circuit is completely dependent on the panel assigned to the case. While that has been a criticism of the Federal Circuit for some time, it increasingly seems outcomes are arbitrary, capricious and wholly unpredictable— at least until you know who the judges are who will decide the case.

Misapplication of Obviousness: What the MPEP gets wrong about obviousness rejections

MPEP 2141 actually cites to Arendi, but then quotes the case entirely out of context. This is a worrisome problem that can be found in many parts of the MPEP, which makes the MPEP a useful reference tool to find relevant cases, but as useful as an opponent’s brief when it comes to accurately characterizing the holdings of decisions. For example, MPEP 2141 actually cites Arendi for the proposition that common sense can be used to supply a missing limitation from the prior art in an obviousness rejection. That, however, is the exact opposite proposition for which the case actually stands.

Google vs. the Luddites: A Patent Battle Neither Side Should Win

The idea that all software is obvious is a theoretical argument that doesn’t just border on the scattological, it wades right into the sewer. Consider artificial intelligence. If AI, which requires the use of software algorithms, is supposed to augment human intelligence and provide us with answers to questions we can’t figure out without the use of AI, how is that at all obvious? What about IBM’s Watson cognitive computing platform? … When the highest court in the land incorporates such backward-minded patterns of thought which allows them to say that “At its most basic, a computer is just a calculator capable of performing mental steps faster than a human could,” the U.S. patent system must be a relative paradise to Duda and other anti-patent Luddites who believe that software inventions cannot and should not be patentable at all.

Federal Circuit expands printed matter doctrine to include information and mental steps

In Praxair Distribution v. Mallinckrodt Hospital Products, Praxair petitioned for inter partes review of claims 1-19 of the ’112 patent, which the Board instituted. The Board held that claims 1-8 and 10-19 would have been obvious over four prior art references. However, claim 9 survived. Praxair appealed from the Board’s decision regarding claim 9, and Mallinckrodt cross-appealed regarding claims 1-8 and 10-11. The Federal Circuit affirmed the Board’s decision holding claims 1-8 and 10 unpatentable as obvious. Judge Newman concurred in judgment of unpatentability of claims 1-11, but disagreed with the Court’s view of the “printed matter doctrine” and its application to “information” and “mental steps.”

Prosecution Disclaimer 101: Argument relied upon by examiner results in prosecution disclaimer

The PTAB found the claims in question obvious for two reasons. First, in its primary ruling the PTAB held that there was no prosecution disclaimer, finding the “single entry” limitation of the claims to include text selection by a user, which was clearly within the prior art. The PTAB reasoned that claims these claims were not limited by the prosecution record, but to do this the PTAB had to ignore both the patent examiner’s Reasons for Allowance and the argument made by the applicant in the Remarks. Rather inexplicably, citing Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1379 (Fed. Cir. 2005), the PTAB ruled that it is up to the applicant to disclaim scope, not the examiner. But such a rationale simply ignored the facts on the record, namely that the reason the examiner explained the claims were allowed was precisely because of the argument made in the Remarks. Therefore, it was the applicant that specifically gave up that claim scope, as required to establish a prosecution disclaimer.