IN RE INDEX SYSTEMS, INC. (Fed. Cir. 2014) (NP) – Market pressure may render each of a set of finite solutions obvious to try

by Steve Driskill | Aug 11, 2014 | [sub] motivation, Obviousness

When there is “a design need or market pressure to solve a problem” and there are only “a finite number of identified, predictable solutions to that problem,” all such solutions are likely obvious under an obvious-to-try rationale. For example, when there is a...

IN RE RAJEN PATEL (Fed. Cir. 2014) (NP) – Proximity alone between non-overlapping ranges is not enough to establish obviousness

by Steve Driskill | Jul 16, 2014 | [sub] motivation, Obviousness

A rejection “based on ranges approaching each other” is not appropriate without “a teaching in the prior art that the end points of the prior art range are approximate, or can be flexibly applied.” Where “differences clearly exist and there is no evidence that they...

IN RE WIRTH (Fed. Cir. 2014) (NP) – Obviousness of modifying an identifier format

by Steve Driskill | Jun 12, 2014 | [sub] motivation, Obviousness

Although a fact specific inquiry, it may be obvious as here to replace the format of one type of identifier (e.g., a random but unique numerical identifier) with another type of identifier (e.g., a person’s name) when both achieve the same result (e.g., unique...

BRISTOL-MYERS SQUIBB COMPANY v. TEVA PHARMACEUTICALS USA, INC. (Fed. Cir. 2014) (P) – Post-invention discoveries do not teach away

by Steve Driskill | Jun 12, 2014 | [sub] teaching away, Obviousness

Suggestions teaching away from combining references to arrive at the claimed invention but arising after the time of the invention are irrelevant. “Obviousness, and expectation of success, are evaluated from the perspective of a person having ordinary skill in the art...

ALLERGAN, INC. v. APOTEX INC. (Fed. Cir. 2014) (P) – Specific unpredictability in the field is more Important than general

by Steve Driskill | Jun 10, 2014 | [sub] motivation, Obviousness

The relevant inquiry with regard to the level of predictability in the art is not the general unpredictability of the field of the invention at large, but rather, the more specific unpredictability of arriving at the claimed invention in particular based on the state...

INTOUCH TECHNOLOGIES, INC. v. VGO COMMUNICATIONS, INC. (Fed. Cir. 2014) (P) – Requirement for an explicit obviousness rationale

by Steve Driskill | May 9, 2014 | [sub] motivation, Obviousness

To establish a prima facie case of obviousness under 35 U.S.C. § 103, it is not sufficient to show that the references are like separate pieces of a simple jigsaw puzzle. An explicit reason or motivation must be established for one of ordinary skill in the art at the...