Posts Tagged: obviousness


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
19 days 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
28 days 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 …

Bass, Spangenberg IPR of Juxtapid gets instituted by PTAB

Kyle Bass and Erich Spangenberg (Coalition for Affordable Drugs) won two more victories at the Patent Trial and Appeal Board (PTAB). This time Bass and Spangenberg obtained …
By Gene Quinn
6 months ago 3

What is a patent and where do patent rights come from?

A patent is a proprietary right granted by the Federal government pursuant to laws passed by Congress. The Congressional power to authorize patents is found in Article …
By Gene Quinn
6 months ago 2

CAFC: Obvious even if it meant foregoing benefits of prior art

The Court affirmed the obviousness rejection. “As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong […

Timely filed supplemental information does not need to be considered by PTAB in IPR

The PTAB refused entry of the supplemental information because Redline did nothing to justify submitting it after filing the initial IPR petition and even after the institution …
By Gene Quinn
8 months ago 0

CAFC Finds Substantially Pure Isomer Obvious From Prior Art 50/50 Mixture

The issue on appeal was whether a mixture comprising at least 92% of the (6S) isomer of leucovorin would have been obvious when both the 50/50 mixture of isomers …

Understanding Obviousness: John Deere and the Basics

The legal determination about whether an invention is obvious seems completely subjective and sometimes even arbitrary. In some technology areas nothing ever seems to be obvious, in …
By Gene Quinn
11 months ago 22

Whether Person of Ordinary Skill Would Add Vent to Disinfecting Cap is Genuine Dispute

The Federal Circuit disagreed, holding that “record evidence establishe[d] a genuine dispute over whether a person of ordinary skill would have been motivated to add a …

Teaching Away Insufficient to Overcome Motivation to Combine References

While Dome’s argument against obviousness based on Tanaka teaching away was plausible, it was not sufficient to overcome the district court’s factual findings that a …