GAMMINO v. SPRINT COMMUNICATIONS COMPANY (Fed. Cir. 2014) (NP) – Prosecution statements characterizing all elements of a set preclude enforcement against a subset

by Steve Driskill | Aug 15, 2014 | [sub] prosecution history, Estoppel / Disclaimer

Repeated and unqualified statements in the prosecution history that the claimed invention treats all elements of a set in a certain manner may preclude enforcement against a system that selectively operates on a subset of those elements. For example, as here, stating...

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 KARPF (Fed. Cir. 2014) (NP) – Silence in the prior art is not sufficient to show anticipation without inherency

by Steve Driskill | Jul 25, 2014 | [sub] inherency, Anticipation

Silence in the prior art is not sufficient to sustain a rejection on the grounds of anticipation without inherency, which requires more than the mere possibility or even probability that the feature at issue is contemplated. Background / Facts: The application on...

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...

GOLDEN BRIDGE TECHNOLOGY v. APPLE INC. (Fed. Cir. 2014) (P) – Submission of applicant’s own or acquiesced remarks in an IDS may constitute disclaimer

by Steve Driskill | Jul 14, 2014 | [sub] prosecution history, Estoppel / Disclaimer

In general, although the “mere disclosure of potentially material prior art to the [PTO] does not automatically limit the claimed invention,” “an applicant’s remarks submitted with an [IDS] can be the basis for limiting claim scope.” In particular, as here,...