A factor in analyzing obviousness Obviousness is based, in part, on the path a person having ordinary skill in the art (PHOSITA) would have taken based on the prior art, and not the path the inventor actually took. In the following case, the patent owner took a commonly known path to produce a stable version of a known drug compound but in taking that path created a new … [Read more...]
After filing a patent application
After filing a patent application, the invention is now patent pending which marks the point at which it is safe to start marketing the invention. The process of patent protecting the invention has now formally started. Browse related articles below.
Meiresonne v. Google (Fed. Cir. March 7, 2017) stands for the proposition that a proper teach away argument to defeat of obviousness rejection requires a discussion in the prior art of more than just a preference away, disparagement or being critical of the combination suggested by the examiner to make the claimed invention. A proper teach away argument requires that the prior … [Read more...]
Summary A proper rejection on obviousness requires that the examiner show how one of ordinary skill in the art would have been motivated to combine two or more prior art references to make the claimed invention. In Personal Web Technologies v. Apple (Fed. Cir. 2/14/17), the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) failed to explain why a relevant … [Read more...]
For an examiner to reject a claim based on anticipation, each and every limitation must be found either expressly or inherently in a single prior art reference. An anticipation rejection is a rejection where the examiner is of the opinion that the claimed invention is not novel. However, the United States Patent and Trademark Office (USPTO) has taken a liberal approach to … [Read more...]
Basic facts In D’Agostino v. MasterCard International (Fed. Cir. 2017), the limits of what is the broadest reasonable interpretation of a claim limitation is explored. In this case, if the interpretation is illogical based on the claim structure, the patent specification and the file history, then the interpretation would be unreasonably broad. MasterCard petitioned the … [Read more...]