Strategies for Handling AIA Section 14 Rejections

by MAnderson | May 20, 2020 | [sub] printed matter, Claim Interpretation, Obviousness

Even before the Supreme Court case Alice v. CLS Bank limited the areas of economic and financial innovation which could be patented, Congress was looking at ways to restrict patent applications and patent enforcement in these fields. In addition to business method...

IN RE NUVASIVE, INC. (Fed. Cir. 2016) (P) – Merely adopting one party’s position is generally insufficient to support the PTAB’s finding of obviousness

by Steve Driskill | Dec 7, 2016 | [sub] motivation, Obviousness

Merely adopting the position of one of the parties to an appeal or review is generally insufficient to support a finding of obviousness by the PTAB. Here, for example, the PTAB’s reliance on only a conclusory statement by an expert that the modification of the prior...

APPLE INC. v. SAMSUNG ELECTRONICS CO., LTD. (Fed. Cir. 2016) (P, en banc) – It is not obvious to reach across fields and select an undesirable feature from a prior art reference

by Steve Driskill | Oct 7, 2016 | [sub] motivation, Obviousness

It is generally not obvious to reach across fields and select an admittedly undesirable feature with which to modify another prior art reference. Here, for example, no motivation to combine was found for modifying a primary reference directed to a mobile phone with a...

CLASSCO, INC. v. APPLE, INC. (Fed. Cir. 2016) (P) – A change in functionality does not automatically negate an obvious combination of prior art elements

by Steve Driskill | Sep 22, 2016 | [sub] motivation, Obviousness

A change in specific functionality does not automatically negate a combination of prior art elements in establishing obviousness. Here, for example, modifying a prior art reference’s telephone speaker to perform the claimed announcing of a caller’s identity as well as...

IN RE NATURAL ALTERNATIVES, LLC (Fed. Cir. 2016) (NP) – Similarities in manufacturing processes alone cannot negate an explicit difference with the prior art

by Steve Driskill | Aug 31, 2016 | [sub] motivation, Obviousness

Similarities in manufacturing processes alone cannot negate an explicit difference between a product in the prior art and that of the claimed invention. Here, for example, the desugared sugar beet molasses of the claimed invention was found to sufficiently distinguish...

ARENDI S.A.R.L. v. APPLE INC. (Fed. Cir. 2016) (P) – A “common sense” reason for adding a missing limitation to the prior art is generally improper

by Steve Driskill | Aug 10, 2016 | [sub] motivation, Obviousness

A “common sense” reason for adding a missing limitation to the prior art to establish obviousness is generally improper unless the limitation is unusually simple and a reasoned analysis is still provided. Here, for example, adding a search operation to detect...