- Professor Lichtman and his students at UCLA reenact Bilski v. Kappos. [Download the MP3]
- Jeremy Grushcow discusses “three need-to-know Canadian patent decisions that impact pharma, biotech and generic companies”: [LINK]
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- Lundbeck v. Ratiopharm (the Canadian Patent Act imposes a duty of candor).
- Bayer v. Canada (the government will only list a formulation pharma patent in its patent register (i.e., Orange Book) if the patent claims include limits to “all of the approved medicinal ingredients” in the formulation).
- Sanofi-Aventis v. Hospira (a disclaimer of scope may be filed after receipt of a notice of allegation).
- Director Kappos discuses the “impact of KSR” on his blog: [LINK]
KSR has unquestionably refocused the obviousness inquiry by reinvigorating the fundamental questions of Graham. Because the Supreme Court clarified that teaching-suggestion-motivation was not the sole test of obviousness, the Graham analysis is not to be carried out in a rigid manner. As a result, some claims that may have been found to be non-obvious before KSR will now correctly be found to be obvious.
Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications. For example, it may be necessary to review a broader cross-section of prior art than was previously necessary, or to consider filing evidence of unexpected results earlier rather than later in the course of prosecution. By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.
- New lawsuits against Kappos (in his role as PTO director)
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- Cephalon France v. Kappos (patent term adjustment recalculation).
- Komipharm International v. Kappos (demanding that it be recognized as the assignee of its patent rights).
- Tolerx v. Kappos (patent term adjustment).
- Centre National De La Recherche Scientifique v. Kappos (patent term adjustment).
- Mosaid Tech. v. Kappos (patent term adjustment).
“‘Clarence Thomas speaks?’
What’s that? The title of a book you might read in the car while waiting for the light to turn green?”
Hey, stranger things have happened.
link to amazon.com
“Professor Lichtman and his students at UCLA reenact Bilski v. Kappos.”
I’m waiting for the version by the Batley Townswomen’s Guild.
No whatever are you speaking about.
Sarah,
Did you generate that post using the program I use to write my opinions, namely:
link to weekvandepsychiatrie.nl
?
Lets hope a SCOTUS Judge reads this.
Now that the Court has dismissed my Case as ramblings I can and I will publish the fact that Litman and Wenzel destroyed my Oath, that i faxed to them and was told to destroy because as Wenzel stated it was a foreign Insurance form and to not even consider it because it was to expensive. And then when Dolph Torrence tried to tell me I neede to sign another foreign Insurance form of course I didn’t realize then that it was a quarteback sneak to get another oath in the PTO. And wenzel saying it was a 250,000 type charge … WOULD YOU. When Mr Loffler only sent Me a copy of the Oath, I did not get it.
MORE TO COME
Not the claim’s intended purpose, silly, the intended purpose of the primary reference that’s being modified in the alegedly “obvious” manner.
@Pickles – I don’t think the level of skill in the art plays into it all that often. How I wish I could cite real examples – but it wouldn’t be prudent.
” for its intended purpose.”
Is that intended purpose in the claim?
50$ says it isn’t.
The guidance for KSR really isn’t too radically different from what’s been done in the past. From MPEP guidance below (1) and (2) basically map to how many examiners have been taught to write (First guy teaches X but not Y. Second guy teaches Y). Comparable=analogous art. (3) can be addressed like the motivation in TSM (only pulled out of the air instead of out of an out of context portion of a reference). The “predictable” part in (3) is addressed easily enough by a throwaway statement. (4) is just secondary considerations. Nothing’s really different except there are more zingers to say something is obvious.
KSR guidance for “use of known techique…” (Mpep 2143C)
(1) a finding that the prior art contained a “base” device (method, or product) upon which the claimed invention can be seen as an “improvement;”
(2) a finding that the prior art contained a “comparable” device (method, or product that is not the same as the base device) that has been improved in the same way as the claimed invention;
(3) a finding that one of ordinary skill in the art could have applied the known “improvement” technique in the same way to the “base” device (method, or product) and the results would have been predictable to one of ordinary skill in the art; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
I agree with Znutar here.
I am finding that although KSR provides a lot of verbage for supporting a 103 rejection, many of the 103 rejections do not show where the recited elements of a claim exist in the prior art.
Sometimes, the Examiner will cite to a paragraph or two and say “elements A, B, C, and D are in that section of the patent”. Many times, the reference does not disclose what the Examiner says it does, so the Examiner’s arguments for the reasons supporting obviousness “obvious to try, better results, etc.” do not really matter because a prima faice rejection was not made.
So, I am not finding KSR as such a problem for patentability.
The issue that burns more bandwidth is Bilski and how many office actions I get that contain 101 rejections (for almost any method claim). I also am finding that the newer examiners make the Bilskieque rejections in almost every office action that I get from them. I get those rejections even when the claim pertains to a video encoder/decoder.
Znutar, my experience shows that when an argument attempts to show “that the result one would predict would not work for its intended purpose”, it is usually from the viewpoint of someone of (at most) rudimentary skill in the art. E.g. someone building a professional video editing system would generally be able to fill in the blanks to work with whatever post-prod. equipment they need to, and wouldn’t merely tape one device to the other and say “hey, that didn’t work!”.
I don’t mean to sound disparaging, but when the argument gets to that point, it usually doesn’t relate back to specific claim language, or refers to a truly minor difference in interpretation, rather than something fundamental (i.e. could be used as a reason for allowance).
The best course of action is certainly to clearly convey your rejection the first time, but knowledge of KSR will certainly also help. Luckily, the Kappos post shows that efforts are being made to boil down two years of KSR case-law into examiner-friendly examples. In the meantime, let’s both try to at least honor the language in the constitution..
Exactly, BigGuy. I’m not seeing “obvious to try” so much, but I have a case now where the rejection is based on the rationale that the claim is met by a combination of known parts to yield predictable results. I showed that the result one would predict would not work for its intended purpose. The reply I received was “but the result is predictable.”
“umm, duh! Thus the crippling flood of appeals at BPAI.”
Hmmm… My rate of appeal has gone way up, but I don’t think it’s directly attributable to KSR. KSR didn’t approve the wholesale fabrication of elements, or the combination of teachings that simply cannot be combined, without regards to motivations or suggestions.
I haven’t seen any evidence that examiners have been adequately trained in KSR – one result is that a large percentage of the 103’s I receive are ostensibly based on an “obvious to try” rationale when that rationale makes no sense whatsoever. (A hint to examiners – “obvious to try” is NOT a catchall to cover the “it’s obvious because I say it’s obvious” line of reasoning.) Notwithstanding the inability of many examiners to actually articulate a rationale that meets the KSR standards, if the references actually show the claimed features, and if those features really could be reasonably combined to yield my claim, then I advise the client to amend or walk away. What surprises me is how rarely this actually happens.
“Clarence Thomas speaks?”
What’s that? The title of a book you might read in the car while waiting for the light to turn green?
“As a result, some claims that may have been found to be non-obvious before KSR will now correctly be found to be obvious.”
umm, duh! Thus the crippling flood of appeals at BPAI.
“Inventors and practitioners will need to take these developments into account when preparing and prosecuting applications. For example, it may be necessary to review a broader cross-section of prior art than was previously necessary, or to consider filing evidence of unexpected results earlier rather than later in the course of prosecution. By being proactive, practitioners will expedite prosecution and avoid unnecessary fees and RCE filings.”
Thank you! But I thought that scheming examiners were the cause of *forced* RCEs and the RCE “gravy train”, blah blah blah
re: Red Monkey
Clarence Thomas speaks?
It appears the reason they did this is to sell CLE credits to Attorneys…
I’m going to listen to the recording at bed time. It’s so soothing … and can put you to sleep. (And I’m a patent attorney.)
What a clever idea to stage a re-enactment of the Bilski argument given the slow release of the tape. It must have been not very exciting to play Clarence Thomas though.
“For example, it may be necessary to review a broader cross-section of prior art than was previously necessary”
Likewise, the second edge of the sword of PHOSITA, in that what is required to be included in an application is NOT what a PHOSITA would know, necessarily loosens the bounds of 112. Such is the law of unintended consequences that KSR impacts.
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