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...

IN RE DINSMORE (Fed. Cir. 2014) (P) – Terminal disclaimers not generally rescindable via reissue

by Steve Driskill | Jun 10, 2014 | [sub] reissue, PTO Procedure

Although the court specifically noted that it “need not address broader questions about the intersection of reissue standards and terminal disclaimers,” at least in cases as here where an applicant knowingly and intentionally files a terminal disclaimer for patents...

Q. I. PRESS CONTROLS v. LEE (Fed. Cir. 2014) (P) – Proactive arguments against non-asserted rejections on appeal

by Steve Driskill | Jun 9, 2014 | [sub] appellate, PTO Procedure

The Board has been encouraged here by the Federal Circuit to review the examiner’s rejections for consistency and make independent rejections based at least on the art before it where appropriate. Depending on how this plays out, it may make sense to proactively argue...