by Steve Driskill | Apr 22, 2014 | [sub] obviousness-type, Double Patenting
A patent that issues after but expires before another patent still qualifies as a double patenting reference for that other patent. This expiration-date centric analysis is a departure from the traditional issue-date centric analysis. “[L]ooking to patent issue dates...
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 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 4, 2014 | [sub] corresponding structure, Means Plus Function
The statutory requirement for importing the specification’s structural limitations into a means-plus-function element does not extend to or otherwise impact the interpretation of the recited function as claimed. “When construing functional claims under § 112 ¶ 6, the...
