Prosecution Pointer 69

Prosecution First Blog Pointer

The World Intellectual Property Organization (WIPO) published IP facts and figures 2016 can be found here; it is an overview of intellectual property activity based on the latest available year of complete statistics.

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Jordan’s Accession to the Patent Cooperation Treaty

Author: Anthony D. Del Monaco, Louis M. Troilo, and Laith M. Abu-Taleb
Editor: Adriana L. Burgy

Jordan is off to a busy and productive year from an intellectual property standpoint. Starting late in December of 2016, the Jordanian Council of Ministers approved the accession of the Kingdom into the Patent Cooperation Treaty (PCT), allowing the country to join 151 other member-states in the World Intellectual Property Organization (WIPO) union. On March 9, 2017 Ms. Saja Majali, Jordan’s Ambassador and Permanent Representative to the United Nations, officially deposited the country’s instrument of accession to the PCT, allowing Jordan to become the 152nd Contracting State of the PCT. This move gave the Kingdom an official starting date: On June 9, 2017, Jordan will officially become bound by the PCT.

Under the leadership of Director Zain Al Awamleh, the Jordanian Industrial Property Protection Directorate in Amman will likely see an increase in patent filings, as the technology boom continues to improve Jordan’s regional and global economic status. As of June 9, 2017, companies from all over the world will be able to seamlessly file patent applications in Jordan. Further, Jordanian inventors will be able to reach every corner of the globe in protecting their innovations. This move will boost the country’s position as an up-and-coming leader in technology and innovation, further connecting Jordanian innovators to the global market.

The PCT has carefully honed the fundamental tenets associated with the patent process since 1978, including reasoned search reports and detailed written opinions. With this increased knowledge base, and the world within reach, Jordan’s global status as an innovation hub will increase to allow Jordanian nationals and residents further avenues to protect their ground-breaking innovations and disruptive technologies. In turn, these companies will have internationally protectable ideas, which will facilitate higher employment and the growth of a knowledge-based economy. This move will thus cement Jordan’s status as a stable country with a young and educated population; one that is ripe for investments in the innovation, research, and development sectors.

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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Thales : Federal Circuit Forces Acceleration on § 101 for Physics-Based Claims

Author: Christopher C. Johns
Editor: Adriana L. Burgy

CAFC DecisionThales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017)

Decision:  In Thales Visionix Inc. v. United States, No. 15-5150 (Fed. Cir. Mar. 8, 2017), the Federal Circuit reversed a decision of the Court of Federal Claims, 122 Fed. Cl. 245 (2015), that found claims drawn to an inertial tracking system ineligible. In reversing, the Federal Circuit found that the claims were not directed to an abstract concept.

BackgroundThe system claim at issue requires a first sensor on a “tracked object,” a second sensor on a “moving reference frame,” and an “element” that receives signals from both sensors and determines an orientation of the tracked object relative to the moving reference frame. (A similar method claim was also found eligible.) Traditional inertial tracking systems measured inertial changes with respect to the earth. In contrast, the claimed system measures changes with respect to the moving reference frame. According to the patent, this unique combination and arrangement of sensors provides better accuracy and requires less effort to set up than other systems.

Issue:  The Court of Federal Claims reasoned that the claims were directed to mere laws of physics. The Court found that the claims were directed to the idea of using “mathematical equations for determining the relative position of a moving object to a moving reference frame.” 122 Fed. Cl. at 252. The Court explained that while the equations represented “complex mathematical concept[s] and a solution to the problem of tracking two moving objects in relation to each other,” they still represented a “building block of human ingenuity” and that the solution lay in the formulas rather than the devices in the claims. Id. The Court also found that there was no inventive concept beyond that idea because the claims required “generic, fungible inertial sensors.” Id. at 253.

Outcome:  On appeal, the Federal Circuit relied on Diamond v. Diehr, 450 U.S. 175 (1981). In Diehr, the claims utilized the well‑known Arrhenius equation to calculate optimal cure time for curing and molding raw rubber. The Diehr court found the claims patent‑eligible as they improved upon the prior methods of curing rubber by constantly measuring actual temperature, recalculating cure time based on the temperature, and automatically opening the press at the end of the cure time.

The Federal Circuit found the claims in Thales “nearly indistinguishable” from those in Diehr. Slip op. at 8-9. Just as in Diehr, while the invention uses mathematical equations to determine the orientation of the object relative to a moving frame, the equations are used in conjunction with an “unconventional utilization of inertial sensors” that may seem “strange” to those skilled in the art. Slip op. at 9-10. Importantly, the Court found that the claims did not try to tie up the equations or use of physics principles themselves, but “seek to protect only the application of physics to the unconventional configuration of sensors.” Slip op. at 11. The unconventional use of sensors led the Court to conclude that the claims were not directed to an abstract idea.

The Court did not go to the second step of the Alice/Mayo framework (“inventive concept”), having found the claims not directed to an abstract idea. Id.

Prosecution Takeaway:  Thales could be useful in cases where the invention relies on an application of physics or the laws of nature. Explain to the Examiner that your claims do not seek to tie up the accused law of nature but only the application of a principal to a particular configuration of elements. Moreover, amending the claims to require an “unconventional” configuration of devices – even if your claims recite generic or known devices – may assist in overcoming a finding of ineligibility as being directed to an abstract idea.

Also read our related post on the Federal Circuit IP Blog here

 

DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.

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Prosecution Pointer 68

Prosecution First Blog Pointer

The USPTO Systems Status and Availability can be found here.

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In re Ethicon: Connecting Seemingly Unrelated Dots May Support An Obviousness Conclusion

In re Ethicon: Connecting Seemingly Unrelated Dots May Support An Obviousness Conclusion

Author: Clara N. Jimenez
Editor: J. Derek McCorquindale

Composition claims are often rejected as obvious over the combinations of prior art referenced, that separately claim the ingredients of the claimed combination. Moreover, often the disclosure of the claimed ingredients is in the context of different chemical applications. In such cases, the obviousness determination frequently turns on whether one of ordinary skill in the art would have been motivated to combine the references to arrive at the claimed invention with a reasonable expectation of success. The inquiry is highly factual and can lead to different results, depending on the perspective of the fact finder. The Federal Circuit opinion in In re Ethicon —and Judge Newman’s dissent—illustrate the difficulty of this inquiry. 844 F.3d 1344, 1354 (Fed. Cir. 2017). Continue reading

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