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...

GENERAL ELECTRIC COMPANY v. WILKINS (Fed. Cir. 2014) (P) – Inventorship contributions above the conventional state of the art

by Steve Driskill | May 8, 2014 | [sub] conception, Inventorship

Inventorship requires contributions above the conventional state of the art. A co-inventor “must contribute in some significant manner to the conception or reduction to practice of the invention [and] make contribution to the claimed invention that is not...

IN RE ROSLIN INSTITUTE (EDINBURGH) (Fed. Cir. 2014) (P) – Patent eligibility of cloned animals

by Steve Driskill | May 8, 2014 | [sub] biotech, Subject Matter Eligibility

In general, “clones” which are identical genetic copies of a cell, cell part, or organism are nonstatutory subject matter under 35 U.S.C. § 101, unless the claims “describe clones that have markedly different characteristics from the donor animals of which they are...

IN RE PACKARD (Fed. Cir. 2014) (P) – Indefiniteness standard at the PTO

by Steve Driskill | May 6, 2014 | [sub] clarity, Indefiniteness

The MPEP’s indefiniteness standard in § 2173.05(e), namely, that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear,” has been approved by the Federal Circuit as a reasonable implementation of the USPTO’s examination responsibility as...

GE LIGHTING SOLUTIONS, LLC v. AGILIGHT, INC. (Fed. Cir. 2014) (P) – Claim interpretation to include preferred embodiment

by Steve Driskill | May 1, 2014 | [sub] importing limitations, Claim Interpretation

It is normally improper to construe claims in a manner that would exclude the preferred embodiment, especially where it is the only disclosed embodiment. In particular, “where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to...