Posts Tagged: obviousness


Prior Art Combination that Sometimes Provides Results of Broadly Claimed Method Can Make that Method Obvious

In 2013, Google, Inc. (“Google”) filed inter partes review and covered business method petitions challenging the validity of Unwired Planet, LLC’s (“Unwired”) patent, at issue on appeal. …

Federal Circuit Upholds Obviousness Rejection of Claimed Influenza Inhaler

A divided panel of the Federal Circuit affirmed the Board’s rejection of all pending claims as obvious in an appeal arising from a method for treating …

Negating Hindsight Reconstruction: A Logical Framework

It is well known that hindsight reconstruction is an insidious error that infects patent prosecution. The Federal Circuit has noted that it is a difficult task to …
By Peter Kramer
1 month ago 32

En Banc Federal Circuit finds substantial evidence to support jury verdict in Apple v. Samsung

The Court found substantial evidence to support the jury’s finding of infringement. While Samsung’s expert offered conflicting testimony, a reasonable jury could have credited Apple’…

Section 103 Rejections: How Common Are They and How Should You Respond?

There are several major statutory rejections that an applicant can receive during the course of patent prosecution at the USPTO, each one corresponding to the relevant section …

In non-precedential decision CAFC reverses PTAB finding of obviousness in reexamination

In re: Natural Alternatives, LLC, 2015-1911 (opinion and errata) is a non-precedential but still notable case from the U.S. Court of Appeals for the Federal Circuit …
By John M. Rogitz
2 months ago 1

Federal Circuit Affirms the PTAB, Emphasizing KSR’s Flexible Approach to 103

The Court affirmed the Board’s finding that two previous patents render the ‘695 Patent obvious. The Court rejected ClassCo’s argument that “[a] basic characteristic of a …

Is it Time To Amend 101?

Rather than the drastic measure of abolishing § 101, such as that proposed by previous USPTO Director Kappos, we think that a simple change to § 101 that removes the confusing …

CAFC: Obviousness Analysis Must be Based on More than Common Sense

The Court recognized that “‘[c]ommon sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.’” However, “there are at least …

Common sense is no substitute for reasoned analysis and evidentiary support

O’Malley recognized that in Perfect Web the Federal Circuit did authorize the use of common sense to supply a missing claim limitation, but she pointed out …
By Gene Quinn
4 months ago 15

Ex Parte Appeals in the Post-Alice World

Amongst the appeals involving patent-eligibility rejections, the most recently filed appeal brief was filed in November 2015. Thus, all of the appeal briefs and most of the PTAB …
By Kate Gaudry & Samuel Hayim
4 months ago 17

CAFC: References need not be physically combinable for obviousness rejection

Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC (Fed. Cir. June 15, 2016) (Before Dyk, Wallach, and Newman, J.) (Opinion for the court, Wallach, J.). The test for obviousness …

PTAB’s Factual Findings Were Sufficient, Standard Was Improper

The Court noted that decisions related to compliance with the Board’s procedures are reviewed for abuse of discretion. As far as the “reasonable expectation of success” …

Federal Circuit Affirms Obviousness Based on Evidence from Reexamination

The Court affirmed the obviousness rejection, noting that even under the proper claim construction, substantial evidence supported the Board’s factual findings underlying its obviousness determination. The …

Appending Conventional Steps to Abstract Idea an Insufficient Inventive Concept

The Court held that dealing “physical playing cards” did not constitute patent eligible territory. This constituted a “purely conventional” activity, like the conventional computer implementation that fell …