obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Archive for July, 2010

CAFC Weekly: July 30, 2010

by Orlando Lopez

There were only two precedential opinions handed down during the week ending July 30th.  These opinions related to claim construction and to obviousness double patenting.

In Becton Dickinson v. Tyco Healthcare, a case related to a safety needle, the claim construction was reviewed by the CAFC.  The phrase under question, “spring means connected to said hinged arm,” had been interpreted by the District Court as not requiring a component performing the spring function that was a distinct structural element from the hinged arm.  The CAFC disagreed with the claim interpretation and Justice Gajarza dissented.  The CAFC held that the spring means were separate from the hinged arm and that the claim requires two structures.  The holding in this case should not be taken to mean that two structures are always necessary for separate components in one element of the claim (usually referred to as a limitation); however, if the same structure element is going to perform two claimed functions, then there should be some discussion of this in the specification. Read the rest of this entry »

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Patent Reform- It Should Not Be Treated as Bacon

by Orlando Lopez

A flurry of activity was generated by the patent reform watch community last week, as Sen. Leahy attempted to sneak the Patent Reform Bill as an amendment into the Small Business Loan Funding Bill.  This is a common maneuver in Congress, typically used to insert small pet projects or “pork,” and the maneuver would have reduced or avoided the discussion of the Patent Reform Bill.  Given that small businesses have had little or no input to the Patent Reform Bill, the move was like trying to sneak wolves  into henhouses.  Fortunately, since there were too many amendments being tacked onto the Small Business Loan Funding Bill, the effort to “tack on” the Patent Reform Bill failed. Read the rest of this entry »

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"America is a country of inventors, and the greatest of inventors are the newspaper men."
Alexander Graham Bell

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CAFC Weekly: July 23, 2010

by Orlando Lopez

There was only one precedential case this week, Wyers v. Master Lock, involving three patents assigned to Wyers, for hitch locks used to secure trailers attached to vehicles.  The issue presented to the District Court jury was whether the patent claims were obvious.  The jury found that the claims were not obvious.  Master Lock’s motion for Judgment as a Matter Of Law stating that the patent claims were obvious was denied and Master Lock appealed.  Whether a patent claim is obvious is a question of law based on underlying facts.  The CAFC, giving no deference to the jury, found the patent claims at issue to be obvious as a matter of law.  Besides bringing out the mongrel nature of questions of obviousness, the opinion also includes a good discussion of what is analogous art after the Supreme Court opinion in KSR, as well as a good discussion of motivation to combine references in order to find a claim obvious, as viewed after KSR.

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After the Bilski decision- not much of a change in USPTO practice

by Orlando Lopez

The US Supreme Court decision in Bilski v. Kappos relegated the “Machine or Transformation test,” instituted by the Federal Circuit‘s decision on Bilski, to a useful clue but not the ultimate test.  In terms of defending patent applications at the USPTO (the Patent Office), the decision does not significantly change present practices, according to the memo issued by the USPTO to the examiners.

Since what used to be a test is now a clue, the examiner will first perform the Machine or Transformation test to determine if the method is connected with the particular machine or system, or whether it transforms an article.  If the test results are positive, the examiner determines that the clue is present.  If the machine or transformation clue is present, the examiner faces a heavier burden, “a clear indication,” to show that the method claim is not patentable.  If the test results are negative indicating that the clue is not present, the examiner is advised to reject it as a claim that does not have patentable subject matter; consequently, the applicant then has the burden to show that the method claim is patentable.

As the Federal Circuit starts to consider appeals of cases involving questions of patentable subject matter, including the two cases remanded by the US Supreme Court, the criteria for deciding what is patentable subject matter method claims may evolve, and the practice at the Patent Office may change.  Until then, it is almost business as usual.

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