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...]
Obviousness is a charge made by alleged infringers to invalidate a patent claim and avoid patent infringement liability.
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...]
Sometimes it is very difficult to predict how the courts will decide whether claimed combinations are invalid for obviousness. In Hoffman v. Apotex (Fed. Cir. 2014), the Federal Circuit invalidated a number of claims directed to a method of administering a drug described with ranges as being obvious. The patent at issue was directed to a drug for treating osteoporosis. The … [Read more...]
Inventors frequently ask whether the Patent Office will grant them a patent on their invention. The general answer is that the Patent Office will grant a patent on inventions that are novel (i.e., new) and non-obvious in light of technology existing at the time the patent application was filed. The government does not have an incentive to grant a patent to inventors for … [Read more...]
Justice Kennedy writing for a unanimous Supreme Court, directed the Federal Circuit to broaden the test of obviousness under 35 U.S.C. § 103 back to its original framework as set out in Graham v. John Deere, Co. of Kansas City, 383 U.S. 1 (1966); Hotchkiss v. Greenwood, 11 HOW. 248 (1851); and its progeny. Before the present case and after the decision of Graham, the Federal … [Read more...]