Author Archive | Eric Waltmire

Fighting Obviousness Rejections: Lack of a Valid Rationale to Combine References

The USPTO must provide a reasoned explanation why the person of ordinary skill in the art would combine the prior art references to conclude that an invention is obvious. If the USPTO fails to do this, the obviousness rejection is not valid.

The case of In re NuVasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) demonstrates this principle. Medtronic, Inc. petitioned the USPTO to invalid claims of NuVasive’s Patent No. 8,361,156 (the ‘156 patent). The ‘156 patent was directed to a spinal fusion implant.

Medtronic asserted that the challenged claims of the ‘156 patent were obvious in view of four references: a Synthes Vertebral Spacer-PR brochure (SVS-PR Vrochure), a Telamon Verte-Stack PEEK Vertebral Body Spacer brochure (“Telamon brochure”) a Telamon Posterior Impacted Fusion Devices guide (“Telamon guide”), and U.S. Patent …

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Fighting Obviousness Rejections: Invention Proceeds Contrary to Accepted Wisdom in The Art

When an invention proceeds contrary to the accepted wisdom in the prior art, this is a strong indication that the invention is not obvious in view of the prior art.

The case of W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) demonstrates this principle. This is an old case from 1983, but the principle discussed today from the case is still valid. W.L. Gore & Associates (Gore) sued Garlock for infringing claims 3 and 19 of U.S. Patent 3,953,566 (the ‘566 patent).  The ‘566 patent was directed to a method of making high crystalline polytetrafluorethylene (PTFE), such as might be used as tape. PTFE is known by the trademark TEFLON. PTFE tape had been sold as thread seal tape, i.e., tape used to

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Fighting Obviousness Rejections: Proposed Modification Would Make Inoperable for Intended Purpose

When the USPTO rejects patent claims to an invention as being obvious, it often combines two or more prior art references to make the rejection. The rejection may be improper if the combination proposed by the USPTO renders the prior art reference being modified inoperable for its intended purpose.

The case of Plas-Pak Indus. v. Sulzer Mixpac AG, 600 Fed. Appx. 755 (Fed. Cir 2015) provides an example of this principle (it also discloses another basis to challenge an obviousness rejection). Sulzer asserted that claims of Plas-Pak’s US Patent 7,815,384 (“Plas-Pak’s Patent”) were obvious in view of a combination of two references, U.S. Patent 6,241,125 (“Jacobsen”) and U.S. Patent Publication 2002/0170982 (“Hunter”). Plas-Pak’s Patent was directed to a device and method for mixing and dispensing multi-component paints.

Jacobsen discloses

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A Technique for Producing Ideas

“After experiencing a desire to invent a particular thing, I may go on for months or years with the idea in the back of my head,” said Nikola Tesla. Tesla calls this the incubation period, which precedes direct effort on the invention. Science writer, Steve Johnson, called this a slow hunch. And, in his 1940 publication, A Technique for Producing Ideas, James Young also calls it incubation as a part of the metal digestive process.

Young lays out a five step process for producing ideas. He says that:

“the production of ideas is just as definite a process as the production of Fords;… that in this production the mind follows an operative technique which can be learned and controlled; and that its effective use is just as much

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Fighting Obviousness Rejections: Proposed Combination Changes Principle Operation of the Reference

When the USPTO rejects patent claims to an invention as being obvious, it often combines two or more prior art references to make the rejection. The rejection may be improper if the combination proposed by the USPTO changes the principle operation of the prior art reference being modified.

The case of Plas-Pak Indus. v. Sulzer Mixpac AG, 600 Fed. Appx. 755 (Fed. Cir 2015) provides an example of this principle. Sulzer asserted that the claims of Plas-Pak’s US Patent 7,815,384 (“Plas-Pak’s Patent”) were obvious in view of a combination of two references, U.S. Patent 4,745,011 (“Fukuta”) and U.S. Patent 3,989,228 (“Morris”). The Plas-Pak’s Patent was directed to a device and method for mixing and dispensing multi-component paints.

Fukuta disclosed a device for mixing two-component coatings but did not disclose …

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Trademark Ownership: The Risk of Owning a Trademark Personally

When a founder starts a business, he or she has many decisions to make. One of those is whether he or she should own assets of the business personally or whether he or she should form a corporation or LLC to own the assets of the business and bear the liabilities of a business. Founders are often quick to form a corporation or LLC to operate the business to shield themselves from personal liability arising from claims against the business.

But occasionally founders and business owners operating under a corporation or LLC seek to register and own trademarks personally rather than have them owned by the corporation or LLC. This is probably a mistake that increases their risk of being personally liable for products or services sold under the trademarks as …

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Overcoming Obviousness Rejections: Prior Art Teaching Away From Combination

When the USPTO rejects patent claims based on alleged obviousness, it often combines two or more prior art references to make the rejection. This combination may be challenged if one of the prior art references teaches away from the proposed combination.

For an example of this principle, consider the case of Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1328 (Fed. Cir. 2009). There, Depuy Spine sued Medtronic Sofamor Danek for infringement of U.S. Patent No. 5,207,678 (“the ‘678 patent”). The ‘678 patent is directed to a pedicle screw used in spinal surgeries. A jury determined that Medtronic infringed the patent and awarded $149.1 million in lost profits damages for the sale of pedicle screws.

As a defense, Medtronic argued that the asserted claims of the ‘678 patent …

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Is The Invention Obvious?

In order to obtain a patent on an invention, the invention must not be obvious in view of the prior art. This requirement is provided in 35 USC 103, which states:

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

Obviousness determinations require a multifaceted consideration of the invention and the prior art.

The framework for obviousness determinations is provided by the Supreme Court in …

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How Long Does It Take to Get a US Trademark Registration

After a trademark application is filed, it will be placed in a queue to be examined by a trademark examining attorney at the USPTO. The current USPTO records show that it takes an average of 2.7 months between the time of filing and the time of first action on the application. The USPTO targets between 2.5 and 3.5 months for a first action. In other words, it will take about 2 or 3 months for the office to substantively consider your application.

Further, USPTO records also show the total pendency average to be 9.5 months. Total pendancy is measured from filing to abandonment, allowance, or registration. Currently, the USPTO targets total pendency to be at 12 months or less.

If your application receives an office action with a rejection or …

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The Problem with A Provisional Patent Application and How to Avoid It

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The problem with a provisional application is that it enables applicants to file patent applications that do not adequately describe the invention.

The USPTO does not examine or look at the content of the provisional application. So as long as you send a properly completed provisional coversheet, a document that purports to describe your invention, and pay the filing fee, the USPTO will probably not object to it. Whether your application described the invention in great detail or whether it is a “back of the napkin” submission, the USPTO will probably treat it the same. You will receive an official filing receipt and think you are protected.

But the difference between an adequate description and a back-of-the-napkin description may be the the difference between having a chance to obtain …

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