Tag Archives | obviousness

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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Teaching Away Requires Clear Discouragement to Counter Obviousness

US6673532_Fig1Presense Persuasion Sensing petitioned the USPTO to reexamine (invalidate) certain claims of U.S. Patent 6,673,532 (the ‘532 patent) directed to methods of measuring parameters in a cell culture. The USPTO rejected the challenged claims of the ‘532 patent as obvious in view of a combination of two references, which I will refer to as “Bamboo” and “Weigl.”

University of Maryland Biotechnology Institute (Maryland), which owns the ‘532 patent, argued that Bamboo and Weigl should not be combined because Weigl teaches away from the claimed invention. Maryland  alleged that Weigl taught away because “(1) Weigl’s carbon dioxide sensor is unstable; (2) each of Weigl’s flow-through units has only one sensor, not multiple sensors; (3) Weigl’s various outlets are inconsistent with the claimed invention’s ‘continuous volume’ limitation; and (4) Weigl’s device is …

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Applying Computer and Internet Technology to Replace Older Electronics is Commonplace, Fed. Cir. Says

US20060218618A1_Fig 1Joseph Lorkovic filed a patent application directed to a home entertainment content delivery system for interactive content dissemination over the internet. The USPTO rejected Lorkovic’s claims as obvious based on a combination of U.S. Patent 5,918,012 (“Astiz”) in view of U.S. Publication 2005/0229233 (“Zimmerman”). Lorkovic claimed Astiz and Zimmerman could not be combined because the web browsing functionality in Astiz was not compatible with the analog based Zimmerman device.

The appeals court rejected this argument in In Re Lorkovic, No. 2017-1678 (Fed. Cir. 2017). The court stated, “We have previously observed that ‘applying computer and internet technology to replace older electronics has been commonplace in recent years’ and found obviousness in reliance on that observation.” citing W. Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, …

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