Obviousness Archive

Patent Applicant Denied Administrative Due Process

By Robert H. Bejcek II | Filed in Board of Patent Appeals and Interferences (BPAI), CAFC, Obviousness, Patent, Patent Prosecution, Prosecution History

Many laws are designed with the concept for fairness in mind.  After all, the court of equity was a predecessor to our current legal system. Patent law is no different. Before the Court of Appeals for the Federal Circuit, the case In re Stepan Company centered on this issue and a patentee’s right to administrative due process.[1]

The Stepan Company was the assignee of a U.S.patent[2] which taught “polyol-based resin blends and the methods of using them to create closed-cell polyurethane and polyisocyanurate-based foam.”[3]  Essentially this patent was used to manufacture thermal insulation installed in the walls of buildings.[4]  Concluding a reexamination proceeding, the patent examiner invalidated the patent’s claims as anticipated under §102(b) or obvious under §103(a).[5]  On appeal, the Board of Patent Appeals and Inferences affirmed the invalidation.  Read the remainder of this entry »

Pharmaceutical Claims Found Obvious

By Robert H. Bejcek II | Filed in CAFC, IP Litigation, Obviousness, Patent, Patent Litigation

In 1993, based on a priority date of 1986, Tyco Healthcare Group LP and Mallinckrodt, Inc. (collectively, “Tyco”) was issued U.S. Patent No. 5,211,954 (“the ‘954 patent”) directed to the hypnotic sleep-inducing drug temazepam for the treatment of insomnia.[1]  One of the claims for temazepam formulation reads:

A hard gelatin capsule containing a temazepam formulation
consisting essentially of 6 to 8 milligrams of crystalline
temazepam having a surface area of from
0.65 to 1.1 m2/g and 95% of the temazepam
having a particle size of
less than 65 micronsin admixture with a
pharmaceutically acceptable carrier therefor.

The other claim reciting formulation is identical with the exception of teaching a composition containing 7.5 milligrams of crystalline temazepam.[2] Read the remainder of this entry »

Federal Circuit Reverses BPAI Decision on Obviousness Due to Lack of Substantial Evidence

By Robert H. Bejcek II | Filed in Board of Patent Appeals and Interferences (BPAI), CAFC, Claim Construction, IP Litigation, Obviousness

The Federal Circuit recently decided In re Glatt Air Technologies, Inc., which concerned a previous ruling finding Glatt Air Technologies (“Glatt”) patent obvious in light of prior art.[1]  Glatt developed an improvement upon a coating apparatus used in the coating of pharmaceutical ingredients.[2]  Commonly known as a Wurster coater, the device sprays a liquid coating substance while circulating the particles to be coated.   Read the remainder of this entry »

Federal Circuit Holds Western Union Patents Invalid for Obviousness

By Robert H. Bejcek II | Filed in CAFC, IP Litigation, KSR, Obviousness, Patent, Patent Litigation

 

In 2009, in the District Court for the Western District of Texas, a jury found MoneyGram had infringed upon four patents owned by Western Union.[1]  However, upon appeal by MoneyGram, the Federal Circuit recently reversed that decision and found the four patents were invalid for obviousness in view of prior art presented during the jury trial.[2]  The patents, in general, pertained to a system of monetary transfers that do not require the completion of forms.[3]  These “formless” transfers were based upon a system developed by a company named Orlandi Valuta in 1997.[4]  Read the remainder of this entry »

Three Years After KSR: Examination Guidelines Update

By Robert H. Bejcek II | Filed in KSR, Obviousness

In early September the U.S. Patent and Trademark Office released updated examination guidelines which are to be used by patent examiners to conduct obviousness analyses consistent with recent case law.  This update comes three years after the hallmark Supreme Court decision in KSR International Co. v. Teleflex Inc.[1], which outlined a flexible approach to the principles of obviousness effectively opening the floodgates for waves of obviousness rejections.  For the more patent savvy reader, below is a copy of the appendix released along with the update.  The appendix succinctly summarizes by topic the “teaching points” of important judicial decisions since KSR.  For the full text of the update, click here.

Read the remainder of this entry »

Is Your Invention Obvious? The USPTO Probably Thinks So.

By Dominic A. Frisina JD, MA | Filed in KSR, Obviousness, Patent, Patent Prosecution

As all patent holders are aware, inventions must be new, useful, and non-obvious in order to be patentable. But developments in US case law over the last several years, most notably the 2007 case of KSR Intl. v. Teleflex Inc., have made obviousness rejections much more difficult to overcome.[1] Particularly, in some cases it is now permissible to use the heretofore disallowed “obvious to try” argument to find an invention obvious. The United States Patent and Trademark Office (USPTO) now routinely rejects claims that would have been allowable pre-KSR, and arguably should be allowable even now in view of KSR. Furthermore, many issued patents may now be vulnerable to invalidation under the new standard for obviousness.

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