Posts Tagged: Obviousness Rejection
Webinar: The Art of Responding to Obviousness Rejections
Join Gene Quinn, founder and president of IPWatchdog.com, for a free webinar discussion on responding to obviousness rejections and convincing examiners there is more to the …
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 …
Federal Circuit Vacates, Remands After PTAB Fails to Consider Arguments in Reply Brief
On Friday, June 1st, the Court of Appeals for the Federal Circuit issued a decision in In re: Durance striking down a decision by the Patent Trial …
Claimed and prior art ranges must have meaningful difference for nonobviousness
Patent claims can recite a numerical range and a patent can be awarded based on the novelty and nonobviousness of the claimed range. Normally, compositions are claimed …
Inherency Rejections: Combating Inherent Obviousness
An inherency rejection, whether it be inherent anticipation or inherent obviousness, can be extremely difficult to overcome. Indeed, at many times it seems there is a great …
Inquiry into Unexpectedness is Essential Even for Determining Obviousness in Inherency
The Federal Circuit reversed. Indeed, it found that the Board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation …
Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
The nonobviousness requirement is a critical element to patentability. In essence, even if the applicant can demonstrate patentable subject matter, utility and novelty, the patent will not …
Samsung Succeeds in Reducing Damages for Infringement of Two Rembrandt Patents
Rembrandt sued Samsung for patent infringement in the Eastern District of Texas and convinced a jury that Samsung infringed its two asserted patents, awarding $15.7 million in damages. …
The quest for patent quality: European inventive step and US obviousness
In Europe and the US, patentability depends on a showing of inventiveness that is based on similar legal requirements but practice differs substantially and the resulting patent …
Don’t settle for less: Maximizing patent protection in Canada
Another unnecessary limit that US applicants almost always impose on themselves is in the number of claims. In Canada, there are no extra claim fees. As we …
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 …
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 …
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 …
