Category Archives: Decisions

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

The Safe Harbor Provision of 35 U.S.C. § 121 Against Double Patenting Rejections Just Got A Little Less Safe

Author: Jeffrey M. Jacobstein
Editor: Eric P. Raciti

Ever since the Federal Circuit held that a later-issuing but earlier-expiring patent could serve as an obviousness-type double patenting (OTDP) reference in Gilead Sciences, Inc. v Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2011), Applicants and Patentees have found themselves facing many more double patenting rejections.  Even continuing applications filed in a single portfolio run the risk of receiving OTDP rejections if the claims of the subject and reference patents are not patentably distinct.  See AbbVie Inc. v. Kennedy Inst. of Rheumatology, 764 F.3d 1366 (Fed. Cir. 2014).  The court in Kennedy explained (in dicta) that patents sharing a common priority chain “still can have different patent terms due to examination delays at the PTO.”  AbbVie, 764 F.3d at 1373.  So, patent term adjustment accumulated during examination could be in jeopardy when the subject claims overlap those in a continuation. Continue reading

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RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

RecogniCorp v. Nintendo—Alice Keeps Playing at the Federal Circuit

Author: Elliot C. Cook
Editor: J. Derek McCorquindale

In the nearly three years since Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), the Federal Circuit has analyzed the issue of patent-eligibility in the context of numerous distinct technologies. The court’s precedent applying Alice addresses patents directed to financial services, Internet content filtering, database maintenance, payment-based content access, animated facial gesturing, physical object tracking, distributed data processing, and more. One takeaway is that no technological discipline is, per se, eligible or ineligible. Instead, the outcomes of these cases are better explained by the specific inventions at issue and how they are claimed. RecogniCorp, LLC v. Nintendo Co., Ltd., No. 2016-1499 (Fed. Cir. Apr. 28, 2017), confirms this lesson. Continue reading

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A Tale of Two Methods: Conditions Precedent and Broadest Reasonable Interpretation

Author: Anthony A. Hartmann
Editor: Adriana L. Burgy

PTAB Decision:  Ex parte Schulhauser, Appeal No. 2013-007847 (April 29, 2016)

Background
In an appeal of an Examiner’s rejection of claims under 35 U.S.C. § 103, the Board addressed the application of the broadest reasonable interpretation claim construction standard.

The technology related medical devices for monitoring physiological conditions. The independent method claim recited monitoring of cardiac conditions incorporating an implantable medical device applying a series of steps.  It was not disputed that the prior art did not disclose all of these steps.  However, as noted by the Board, “[i]n claim construction, ‘the name of the game is the claim,’” quoting In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).  Some of the recited method steps were conditional on a condition precedent, e.g., “triggering an alarm state, if the electrocardiac signal data is not within the threshold electrocardiac criteria.”  Indeed, the steps with conditions meant that the claim, under the broadest reasonable interpretation, “covers at least two methods;”  not just the one promoted by the applicant.  Since one of those methods did not require certain steps to be taken, the Board found that prior art was not required to reach those steps.  Continue reading

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Ex Parte Gutta: Computer means-plus-function claims may be indefinite for failure to adequately disclosed a supporting algorithm

Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy

PTAB Decision

Ex parte Gutta, Appeal 2008-4366 (August 10, 2009)

Background

On appeal of 35 U.S.C § 101 rejections for method, system and article of manufacture claims, the Board entered a new ground of rejection under 35 U.S.C. § 112, second paragraph as to sole means-plus-function claim.  The claim related to a system with a “means for computing a variance of the symbolic values,” and a “means for selecting an item that has a symbolic value that minimizes the variance.”  Noting that neither the Examiner nor the appellants had indicated whether the claim invoked § 112, ¶6, the Board determined that the claim clearly used functional language and as such, required adequate supporting structure, material, or acts for performing the claim function in the specification.  Continue reading

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Ex Parte Jellá: Post-KSR: Design Need or Market Pressure to Solve a Problem as Common Sense, Not Innovation

Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy

PTAB Decision

Ex parte Jellá, Appeal 2008-1619 (November 3, 2008)

Background

Appellants invention was directed to a panel section of a garage door “substantially twenty-eight inches” in height such that, put together, the garage door would be a three panel door. The prior art taught that doors could be manufactured with “four, five, six and . . . with other numbers of panels.” The Examiner rejected the claims as obvious under 35 U.S.C § 103(a) over the cited references.

In this appeal, decided about a year after the Supreme Court’s decision in KSR, the Board relied heavily on the Court’s decision and failed to even make mention of the teaching, suggestion, motivation test. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellants made numerous arguments, including that the explicit omission of a three panel door taught away from the invention. The Board disagreed and said that, at most, the reference taught that three-panel doors were not standard and that the door height was a matter of design choice and “no more than the result of the substitution of one element” for another known in the field. The Board stated that the change in the conventional garage door section height is no more than “predictable variation sparked by design incentives” and “an example of market demand driving a design trend [which] the Supreme Court in KSR warned against granting patent protection to advances such as this that would occurring the ordinary course without real innovation.” Moreover, the cited references outline a finite number of predictable solutions.

Continue reading

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