PROMETHEUS LABORATORIES, INC. v. ROXANE LABORATORIES, INC. (Fed. Cir. 2015) (P) – It is obvious to treat a subset of patients with an otherwise known procedure without unexpected results

by Steve Driskill | Nov 10, 2015 | [sub] motivation, Obviousness

It is generally obvious to treat a limited subset of patients with an otherwise known procedure when there are no unexpected results directly attributable to the patient subset itself. Here, for example, limiting the patient pool for a drug treating irritable bowel...

BELDEN INC. v. BERK-TEK LLC (Fed. Cir. 2015) (P) – Motivation to combine prior art references is not negated by a clash in otherwise inconsequential aspects

by Steve Driskill | Nov 5, 2015 | [sub] motivation, Obviousness

Motivation to combine two prior art references is not negated by a clash in inventive aspects that are inconsequential to the problem addressed by the proposed combination. Here, for example, differences in wire configurations (insulated vs. bare) was found to be...

ATLAS IP, LLC v. MEDTRONIC, INC. (Fed. Cir. 2015) (P) – Imprecisions about plurals and conjunctions found in the claim language should be resolved by context

by Steve Driskill | Oct 29, 2015 | [sub] claim context, [sub] grammar, Claim Interpretation

Imprecisions about plurals and conjunctions found in the claim language should be resolved by context. Here, for example, a hub / remote device communication cycle having “intervals during which the hub and the remotes transmit and receive frames” was found to...

SPECTRUM PHARMACEUTICALS, INC v. SANDOZ INC. (Fed. Cir. 2015) (P) – A less-than-pure material is generally obvious over a corresponding pure material

by Steve Driskill | Oct 2, 2015 | [sub] motivation, Obviousness

Absent any unexpected advantages, a less-than-pure material in terms of the active component is an obvious variant of a corresponding pure material. Here, for example, the claimed “substantially pure” pharmaceutical compound that was 92–95% pure material was found to...

IN RE STEED (Fed. Cir. 2015) (P) – No new evidence may be generally submitted on appeal at the PTO that was not before the primary examiner

by Steve Driskill | Oct 1, 2015 | [sub] appellate, PTO Procedure

Absent a recent decision of either the Board or a court, no new evidence may be submitted on appeal at the PTO that was not before the primary examiner. Here, for example, the applicant’s introduction only during the Board hearing of affidavits in support of a Rule...