by Steve Driskill | Apr 21, 2014 | [sub] motivation, Obviousness
An inventor’s own motivations (e.g., as expressed in a patent application) are generally irrelevant to the obviousness analysis. “Patentability does not turn on how the invention was made, but on whether it would have been obvious to a person of ordinary skill in the...
by Steve Driskill | Apr 11, 2014 | [sub] secondary considerations, Obviousness
A greater than expected level of success “does nothing to undercut” a prima facie case of obviousness predicated on a finding of at least a reasonable expectation of success. Background / Facts: The patents at issue here are directed to methods of treating...
by Steve Driskill | Apr 10, 2014 | [sub] corresponding structure, Means Plus Function
For computer-implemented means-plus-function elements relying on algorithm structure, “[t]he algorithm need only include what is necessary to perform the claimed function.” It “[does] not need to include every possible implementation of the function, so long as it...
by Steve Driskill | Apr 8, 2014 | [sub] prosecution history, Estoppel / Disclaimer
Broadening statements in the specification are generally insufficient to overcome a corresponding clear disavowal in the prosecution history. It may therefore be wise to cite to those statements during prosecution (e.g., to combat a written description rejection)...
by Steve Driskill | Apr 7, 2014 | [sub] corresponding structure, Means Plus Function
The algorithm definiteness inquiry for corresponding means-plus-function structure is not one of literal support but whether “a person of ordinary skill in the art would understand the algorithmic structure for performing the claimed function.” Even distinct but...
