Category Archives: 103

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


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)


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.

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