obvIPat - Obviously Patentable

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

Posts Tagged ‘claim construction’

CAFC Weekly: July 9, 2010

by Orlando Lopez

In two precedential opinions, the CAFC considered priority dates of applications in one, and claim construction and damages in the other.

The CAFC, in the case of  In re Giacomini, held that for an application claiming priority of a provisional patent application, the resulting US patent or the published patent application will be considered prior art as of the filing date of the provisional patent application.  Although the USPTO had already stated this in a USPTO Board of Appeals (BPAI) decision, there was some tension between the BPAI decision and a prior, predecessor Court decision, the so-called “Hilmer doctrine.”   Read the rest of this entry »

Share

Patent It Without The Wait: Part 2

by Bruce Jobse

Notwithstanding Undersecretary of Commerce and U.S. Patent and Trademark Office Director David Kappos’s recent announcement of a proposed Three Patent Processing Track system for patent examinations, we are continuing with the second part of our two-part post on the USPTO’s current Accelerated Examination (AE) option.

The premise of the AE process is simple.  The inventor and his or her attorney not only prepare the patent application, but also perform a preliminary or self-examination of the application, essentially performing the patent examiner’s role ahead of time.  Such self-examination requires the attorney to go through the same evaluation protocol as the patent examiner, including searching for similar prior patents and analyzing how obvious the invention is in light of similar prior patents from the same or related technical fields.  The results of the self-examination are then presented to the USPTO in the form of a petition at the time of application filing.  The petition is initially examined for compliance to ensure that the patentability search performed by the applicant was of proper scope and that the analysis adequately establishes grounds for patentability under the current patent laws. Read the rest of this entry »

Share

The “Words Of Degree” Trilogy and More

by Orlando Lopez

The week of April 2nd brought three cases related to “words of degree” in the claims – one of those providing some insight also into obviousness, one case relating to when a claim of incorrect inventorship is a proper cause of action in the courts and one case relating to declaratory judgment.

The “words of degree” trilogy
While the three cases in the “words of degree” trilogy relate to very different technologies, the CAFC opinions have a great degree of commonality. Enzo Biochem et al.v. Applera et al. relates to patents for “labels” attached to DNA or RNA strands which allow detection of a “target” strand.  Power-One v. Artesyn Technologies relates to a patent, assigned to Power-One, for a power supply systems with multiple regulators.  Completing the trilogy, Hearing Components v. Shure relates to two patents directed to hearing aid ear pieces having a number of features including earphones with two different designs, straight and barbed nozzles.  Terms such as “substantially,” “about,” “near,” “adapted to” are referred to, in claim language, as “words of degree.” A common thread in all of the three decisions is the statement by the Court that even though reference to a precise numerical treatment is not given, if a person skilled in the art, when taking the term in the context of the specification, would understand the meaning of the term, the claim is not indefinite. This trilogy of opinions of this week that relate to “words of degree” provides some guidance, both in patent prosecution and patent litigation, as to how to indicate from the specification that the scope of the claim can be determined.

There are some other statements in the opinions, not related to “words of degree,” that are also of interest. In Power One, the Court stated, citing KSR, that merely finding one element of claim independently in one of the references, doing this for all the elements of the claim and combining all of those references is not sufficient to prove obviousness unless a plausible rationale as to why or the references work together is given. In Hearing Components, there is a discussion of the determination of equivalents for “means for” claims and a discussion of the defense of laches, both of which are of interest. Read the rest of this entry »

Share