ROBERT BOSCH, LLC v. SNAP-ON INCORPORATED (Fed. Cir. 2014) (P) – Solely functional descriptions in specification are insufficient to link a claim element to any particular structure

by Steve Driskill | Oct 14, 2014 | [sub] invocation, Means Plus Function

Solely functional descriptions of non-well-known claim elements in the specification are not sufficient to link them to any particular structure and therefore require invocation of a means-plus-function interpretation. Here, for example, the lack of any structural...

IN RE TAYLOR MADE GOLF CO. (Fed. Cir. 2014) (NP) – Common knowledge to be considered for obviousness even if not known for invention’s specific purpose

by Steve Driskill | Sep 30, 2014 | [sub] motivation, Obviousness

Limitations that are common knowledge must be considered as part of the obviousness analysis even if the prior art does not disclose them for the specific purpose of the invention. Here, for example, the fact that press fitting as a means of attachment was common...

EMD MILLIPORE CORPORATION v. ALLPURE TECHNOLOGIES, INC. (Fed. Cir. 2014) (P) – Broadening amendments do not preclude prosecution history estoppel for other narrowing amendments

by Steve Driskill | Sep 30, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Broadening amendments in conjunction with narrowing amendments do not preclude the presumption that prosecution history estoppel applies. Here, for example, broadening a use requirement for a particular transfer member element did not preclude the presumption that...

AMERICAN CALCAR, INC. v. AMERICAN HONDA MOTOR CO. (Fed. Cir. 2014) (P) – Materiality for inequitable conduct applies to even state of the art obviousness references

by Steve Driskill | Sep 26, 2014 | Inequitable Conduct

For inequitable conduct purposes, even prior art representing the state of the art without the core inventive concept can be “but for” material if the core inventive concept is found to be obvious, and all relevant operational details (beyond mere existence alone)...

IN RE ONTJES (Fed. Cir. 2014) (NP) – Statements relating to the invention in the background section may implicate additional prior art

by Steve Driskill | Sep 25, 2014 | [sub] analogous art, Prior Art

Statements in the specification describing the invention may nevertheless be used to more specifically define the particular problem with which the inventor is involved for analogous art purposes when those statements appear in the background section of the...