IN RE SUTTON (Fed. Cir. 2012) (NP) – Level of skill in the art

by Steve Driskill | Nov 20, 2012 | [sub] level of skill, Obviousness

This is another example of how attacking motivation to combine is difficult. Here, the court upheld a somewhat roundabout motivation where the claimed invention was reconstructed through the prior art for fairly ancillary purposes, and the combination then happened to...

TRANSOCEAN OFFSHORE DEEPWATER DRILLING, INC. v. MAERSK DRILLING USA, INC. (Fed. Cir. 2012) (P) – Objective evidence of nonobviousness

by Steve Driskill | Nov 15, 2012 | [sub] secondary considerations, Obviousness

This is likely now the seminal case on objective evidence of nonobviousness. The court went out of its way to note that “[f]ew cases present such extensive objective evidence of nonobviousness, and thus we have rarely held that objective evidence is sufficient to...

IN RE DROGE (Fed. Cir. 2012) (P) – Inventor declarations

by Steve Driskill | Sep 21, 2012 | [sub] secondary considerations, Obviousness

This was a fairly fact specific analysis, but I think one takeaway of note is that an inventor’s own declaration is usually given less weight than that of a more neutral party. It is also another cautionary tale about how an inventor’s own work can be used against...

IN RE APPLIED MATERIALS, INC. (Fed. Cir. 2012) (P) – Obviousness of optimizations

by Steve Driskill | Aug 29, 2012 | [sub] motivation, Obviousness

For “result-effective” variables in which a relationship between property and effect is (at least qualitatively) known in the prior art, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the...

ACTIVEVIDEO v. VERIZON COMMUNICATION (Fed. Cir. 2012) (P) – Combinability of prior art references

by Steve Driskill | Aug 24, 2012 | [sub] motivation, Obviousness

Several good quotes to use against the typically flimsy obviousness rationales flouted by Examiners. Some highlights include arguments against an Examiner reasoning that the proposed combination would provide only expected results (but no apparent benefit): “a...

KINETIC CONCEPTS v. SMITH & NEPHEW (Fed. Cir. 2012) (P) – Motivation to combine

by Steve Driskill | Aug 13, 2012 | [sub] motivation, Obviousness

Taking into account the implied factual findings, the court went through the full Graham-Deere analysis on this one, but I found the motivation to combine discussion the most relevant and useful for prosecution. In particular, the CAFC found that (the jury implicitly...