1 | PTAB BLOG | HOLDING | STATUTE | DISPOSITION | DATE |
|---|---|---|---|---|---|
2 | leland | leland - for 101 "We have also examined, consistent with our precedent, whether the claimed advance demonstrates an improvement on a technological process or merely enhances an ineligible concept." | 101 | REVERSED | 2021-07-08 09:29 +0000 |
3 | dulberg | dulberg - constructing a formerly integral structure [into] various elements involves only routine skill in the art. | 103 | REVERSED | 2021-07-01 09:20 +0000 |
4 | kunzmann | kunzmann - When an Examiner makes a reasonable fact finding and the Appellant does not challenge it, we can accept it as fact. | claim const | REVERSED | 2021-06-29 09:41 +0000 |
5 | eynde | eynde - We reject notion that judicial or administrative notice may be taken of state of the art. Facts constituting state of the art normally subject to possibility of rational disagreement among reasonable men and not amenable to taking of such notice. | 103 | REVERSED | 2021-06-24 09:28 +0000 |
6 | coley | coley - In case of doubt as to whether claims of an application are anticipated, the scales should be inclined toward the applicant. | 102 | REVERSED | 2021-06-23 09:17 +0000 |
7 | crish | crish - In anticipation, “the Board must compare the construed claim to a prior art reference and make factual findings that ‘each and every limitation is found either expressly or inherently in [that] single prior art reference.’” | 102 | REVERSED | 2021-06-23 09:16 +0000 |
8 | zoltek | zoltek - The written description ‘need not include information that is already known and available to the experienced public.' | 112(1) | REVERSED | 2021-06-21 08:58 +0000 |
9 | immunex | immunex - well-established that a patent Specification need not re-describe known prior art concepts | 112(1) | REVERSED | 2021-06-21 08:57 +0000 |
10 | becton | becton - Where “a claim lists elements separately, the clear implication of the claim language is that those elements are distinct components of the patented invention.” | claim const | REVERSED | 2021-06-18 09:19 +0000 |
11 | antonie | antonie - An exception to the general rule that optimization of a value is an obvious modification is where the parameter optimized was not recognized to be a result effective variable | 103 | REVERSED | 2021-06-15 09:20 +0000 |
12 | pfizer2 | pfizer2 - [A]ny superior property must be unexpected to be considered as evidence of non-obviousness | 103 | AFFIRMED | 2021-06-09 09:03 +0000 |
13 | mantech | mantech - determining “that the sequential nature of the claim steps is apparent from the plain meaning of the claim language” | claim const | REVERSED | 2021-06-04 09:10 +0000 |
14 | metabolite | metabolite - “prior art reference that discloses a genus still does not inherently disclose all species within that broad category” and “simply invites further experimentation to find such association” | 103 | REVERSED | 2021-06-02 09:53 +0000 |
15 | broadcom1, power-one | broadcom1, power-one - not obvious just ‘because all of the elements that comprise the invention were known in the prior art;’ rather a finding of obviousness requires a ‘plausible rationale as to why the prior art references would have worked together.' | 2021-05-28 09:19 +0000 | ||
16 | liebel-flarsheim | liebel-flarsheim - In the most specific sense, ‘claim differentiation’ refers to the presumption that an independent claim should not be construed as requiring a limitation added by a dependent claim. | 2021-05-27 08:39 +0000 | ||
17 | knapp | knapp - Judicial notice may be taken of facts neither actually notorious nor bound to be judicially known yet would be capable of such instant and unquestionable demonstration no party would think of imposing a falsity in face of an intelligent adversary | 2021-05-26 09:08 +0000 | ||
18 | crystal | crystal - In the parlance of patent law, the transition ‘comprising’ creates a presumption that the recited elements are only a part of the device, that the claim does not exclude additional, unrecited elements. | 2021-05-24 09:24 +0000 | ||
19 | cyclobenzaprine, kubin, o'farrell | cyclobenzaprine, kubin, o'farrell - throw[ing] metaphorical darts at board in hopes of arriving at successful result, if prior art gave either no critical parameters or no direction which choice likely successful, involves hindsight claims of obviousness. | 2021-05-19 09:20 +0000 | ||
20 | HZNP, AK steel | HZNP, AK steel - consisting essentially of used before list of ingredients in composition claim indicates invention necessarily includes listed ingredients but open to unlisted ingredients that don't materially affect basic+novel properties of invention | 2021-05-14 09:10 +0000 | ||
21 | metalcraft | metalcraft - We cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. | 2021-05-11 07:31 +0000 | ||
22 | rouffet | rouffet - Hindsight is inferred when the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at Appellant’s claimed invention has not been explained. | 2021-05-11 07:30 +0000 | ||
23 | wasica | wasica - It is highly disfavored to construe terms in a way that renders them void, meaningless, or superfluous. | 2021-05-10 08:20 +0000 | ||
24 | Netzer | Netzer - extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic record. | 2021-05-10 08:19 +0000 | ||
25 | ibormeith | ibormeith - in exchange for using a “means for” form of claiming, Appellant’s Specification must disclose with sufficient particularity the corresponding structure for performing the claimed function, and clearly link that structure to the function | 2021-05-07 09:43 +0000 | ||
26 | armbruster | armbruster - Section 112 does not require that a specification convince persons skilled in the art that the assertions therein are correct. | 2021-05-07 09:42 +0000 | ||
27 | jansen, rapoport | jansen, rapoport - claims require that method be practiced with “intent to achieve the objective stated in the preamble” if “not merely a statement of effect that may or may not be desired [but] the intentional purpose for which method must be performed.” | 2021-05-06 08:10 +0000 | ||
28 | trivascular | trivascular - While the broadest reasonable interpretation standard is broad, it does not give the Board an unfettered license to interpret the words in a claim without regard for the full claim language and the written description. | 2021-05-05 09:07 +0000 | ||
29 | baird, jones, merck2 | baird, jones, merck2 - The fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious. | 2021-04-29 09:16 +0000 | ||
30 | graham, hotchkiss | graham, hotchkiss - The fact that judgment and mechanical skill may be required to arrive at a particular combination does not necessarily mean that particular combination constitutes a nonobvious invention. | 2021-04-22 08:38 +0000 | ||
31 | mintz | mintz - Obviousness requires . . . walk[ing] a tightrope blindfolded (to avoid hindsight)—an enterprise best pursued with the safety net of objective evidence. | 2021-04-20 09:04 +0000 | ||
32 | allen eng'g | allen eng'g - thirteen factors indicative of experimental use (to overcome using applicant's own invention as prior art under 102 pre-AIA) | 2021-04-19 08:37 +0000 | ||
33 | grunenthal | grunenthal - To support a conclusion of obviousness, the prior art must give some indication of which parameters were critical or which of many possible choices is likely to be successful. | 2021-04-15 08:52 +0000 | ||
34 | motor vehicle | motor vehicle - The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” | 2021-04-14 08:59 +0000 | ||
35 | C.R. Bard2 | C.R. Bard2 - for existence of a functional relationship, does printed matter merely inform people of claimed information, or instead interact with other elements of claim to create new functionality in claimed device or cause specific action in process. | 2021-04-12 09:05 +0000 | ||
36 | donner | donner - Although dividing line between reasonable pertinence and less-than-reasonable pertinence is context dependent, it ultimately rests on the extent to which the reference of interest and the claimed invention relate to a similar problem or purpose. | 2021-04-09 09:11 +0000 | ||
37 | K-2 | K-2 - The functional language tells us something about the structural requirements | 2021-04-01 08:51 +0000 | ||
38 | textron | textron - In certain circumstances functional language may be used to add limitations to an apparatus claim. | 2021-04-01 08:49 +0000 | ||
39 | guangdong | guangdong - it is well settled that to anticipate a claim, every recited element must be necessarily present—not merely probably or possibly present—in a prior art reference | 2021-03-30 03:57 +0000 | ||
40 | dome | dome - If all elements of a claim are found in the prior art, ... the factfinder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references. | 2021-03-24 09:27 +0000 | ||
41 | honeywell2 | honeywell2 - The Board committed legal error by improperly relying on inherency to find obviousness and in its analysis of motivation to combine the references. | 2021-03-24 09:26 +0000 | ||
42 | EWP | EWP - On the issue of obviousness, the combined teachings of the prior art as a whole must be considered. | 2021-03-18 08:55 +0000 | ||
43 | mercier | mercier - All of the relevant teachings of the cited references must be considered in determining what they fairly teach to one having ordinary skill in the art. | 2021-03-18 08:53 +0000 | ||
44 | smith5, williams | smith5, williams - Simply stating principle (e.g., ‘art recognized equivalent,’ ‘structural similarity’) without providing explanation of applicability to facts of the case at hand is generally not sufficient to establish a prima facie case of obviousness | 2021-03-15 08:51 +0000 | ||
45 | rolls-royce | rolls-royce - under obvious to try rationale, the possible options for solving a problem must have been “known and finite.” | 2021-03-10 09:19 +0000 | ||
46 | durden | durden - patentability of a method does not necessarily depend on the starting materials employed in that method | 2021-03-10 09:18 +0000 | ||
47 | shoes | shoes - a preamble is not limiting when “a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.” | 2021-03-08 09:18 +0000 | ||
48 | keynetik, personalized media, realtime data | keynetik, personalized media, realtime data - [T]he ‘broadest reasonable interpretation’ must ‘take into account the context of the entire patent.’ | 2021-03-03 08:55 +0000 | ||
49 | scientific plastic | scientific plastic - [t]he pertinence of the reference as a source of solution to the inventor's problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor's successful achievement. | 2021-02-26 08:16 +0000 | ||
50 | laitram | laitram - As an initial matter, “it is the claims, not the written description, which define the scope of the patent right.” | 2021-02-24 08:56 +0000 | ||
51 | telcordia, intel | telcordia, intel - [C]laim definiteness depends on the skill level of an ordinary artisan. Therefore, the specification need only disclose adequate defining structure to render the bounds of the claim understandable to an ordinary artisan. | 2021-02-23 08:58 +0000 | ||
52 | neptune | neptune - “our caselaw . . . recognizes a range of third-party opinion that can constitute skepticism” that supports nonobviousness. | 2021-02-23 08:57 +0000 | ||
53 | nidec, kennametal, topliff | nidec, kennametal, topliff - not anticipation if device relied upon might, by modification, be made to accomplish function performed by patent in question, if not designed by its maker, nor adapted, nor actually used, for performance of such functions. | 2021-02-17 09:36 +0000 | ||
54 | google, olano, zerbst | google, olano, zerbst - Arguments not made are forfeited. ... forfeiture is the failure to make the timely assertion of a right, waiver is the ‘intentional relinquishment or abandonment of a known right.’ | 2021-02-09 03:10 +0000 | ||
55 | simpleair, univtex) | simpleair, univtex - Different claim terms are presumed to have different meanings. | 2021-02-05 09:01 +0000 | ||
56 | biogen2 | biogen2 - The nesting of the product-by-process limitation within a method of treatment claim does not change the proper construction of the product-by-process limitation itself. | 2021-02-01 08:54 +0000 | ||
57 | wertheim2 | wertheim2 - if a patent could not theoretically have issued the day the application was filed, it is not entitled to be used against another as ‘secret prior art’ | 2021-01-28 08:35 +0000 | ||
58 | packard | packard - Due to the need for “particular[ity]” and “distinct[ness],” claim language that “is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention” warrants a rejection under § 112(b). | 2021-01-26 04:03 +0000 | ||
59 | sonix, nautilus | sonix, nautilus - The definiteness requirement “strikes a ‘delicate balance’ between ‘the inherent limitations of language’ and providing ‘clear notice of what is claimed.’” | 2021-01-26 04:02 +0000 | ||
60 | anderson2, scripps clinic | anderson2, scripps clinic - [o]pen-ended claims are not inherently improper ... if there is an inherent, albeit not precisely known, upper limit and the specification enables one of skill in the art to approach that limit. | 2021-01-22 07:31 +0000 | ||
61 | ethicon, vickers | ethicon, vickers - an applicant . . . is generally allowed claims, when the art permits, which cover more than the specific embodiment shown | 2021-01-20 08:47 +0000 | ||
62 | custom accessories | custom accessories - The person of ordinary skill is a hypothetical person who is presumed to be aware of all the pertinent prior art. | 2021-01-19 09:42 +0000 | ||
63 | piasecki, rinehart | piasecki, rinehart - When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over. . . . An earlier decision should not ... be considered as set in concrete. | 2021-01-14 09:01 +0000 | ||
64 | hybritech | hybritech - a “patent need not teach, and preferably omits, what is well known in the art” | 2021-01-11 09:42 +0000 | ||
65 | graver tank | graver tank - In determining equivalents, things equal to the same thing may not be equal to each other . . . . Consideration must be given to the purpose for which an ingredient is used in a patent . . . and the function which it is intended to perform. | 2021-01-08 09:29 +0000 | ||
66 | fought | fought - preamble limiting when it serves as antecedent basis for a term appearing in the body of a claim | 2021-01-06 09:03 +0000 | ||
67 | hospira | hospira - If a property of a composition is in fact inherent, there is no question of a reasonable expectation of success in achieving it. | 2021-01-04 09:04 +0000 | ||
68 | I just subscribed to The Rest https://t.co/YI586q1M8i | 2021-01-03 12:19 +0000 | |||
69 | service | service - An agency is bound by its own regulations. | 2020-12-31 09:34 +0000 | ||
70 | bose | bose - [i]nherent components of elements recited have antecedent basis in the recitation of the components themselves. | 2020-12-24 08:48 +0000 | ||
71 | skinmedica | skinmedica - The disjunctive ‘or’ plainly designates that a series describes alternatives. | 2020-12-22 09:10 +0000 | ||
72 | artic cat, intercontinental | artic cat, intercontinental - The court should consider a range of real-world facts to determine ‘whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.’ | 2020-12-18 08:30 +0000 | ||
73 | payne | payne - Facts, such as test data demonstrating inoperativeness . . , or facts set forth in an affidavit (37 CFR 1.132) of an expert in the field suggesting that inoperativeness, [are] highly probative. | 2020-12-17 07:05 +0000 | ||
74 | martek | martek - When a patentee explicitly defines a claim term in the patent specification, the patentee’s definition controls. | 2020-12-14 08:12 +0000 | ||
75 | craig, borkowski | craig, borkowski - policy and purpose of the patent laws preclude the applicability of any doctrine akin to the judicially-developed doctrine of “res judicata” to bar the granting of patents on inventions that comply with the statute. | 2020-12-10 08:37 +0000 | ||
76 | venner | venner - the provision of “automat[ed] means to replace manual activity which has accomplished the same result” is well within the ambit of one of ordinary skill in the art | 2020-12-09 09:58 +0000 | ||
77 | mlot-fijalkowski, ellis | mlot-fijalkowski, ellis - classification of the prior art is weak evidence with regard to the problem being solved. Similarities and differences in structure and function of the inventions disclosed in the references carry far greater weight. | 2020-12-08 07:32 +0000 | ||
78 | smithkline2, dunkel | smithkline2, dunkel - A skeletal ‘argument’, really nothing more than an assertion, does not preserve a claim. | 2020-12-03 08:54 +0000 | ||
79 | chamberlain, kennametal | chamberlain, kennametal - for anticipation using two embodiments in same reference would a skilled artisan ‘at once envisage’ the claimed combination. | 2020-12-02 09:20 +0000 | ||
80 | cordis2 | cordis2 - Our reviewing court has determined the term “substantially uniform thickness,” meant “of largely or approximately uniform thickness.” | 2020-11-30 08:56 +0000 | ||
81 | natural, diamond | natural, diamond - [a] claim to a manufacture or composition of matter made from a natural product is not directed to the natural product where it has different characteristics and ‘the potential for significant utility.' | 2020-11-27 09:08 +0000 | ||
82 | karlin | karlin - The general rule . . . is that the claims of a patent are not limited to the preferred embodiment. | 2020-11-25 08:46 +0000 | ||
83 | CFMT | CFMT - a proposed combination of the prior art “even if supported by a motivation to combine,” must include “all limitations of the claim.” | 2020-11-24 09:37 +0000 | ||
84 | outdry | outdry - "[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining” references | 2020-11-23 08:50 +0000 | ||
85 | iron grip | iron grip - using an inventor’s disclosure to defeat the patentability of the inventor’s claims is “the essence of hindsight” | 2020-11-20 08:26 +0000 | ||
86 | tay, Phillips | tay, Phillips - “Claims in patent applications are given their broadest reasonable construction in light of the claims themselves and the specification as it would be interpreted by one of ordinary skill in the art.” | 2020-11-19 09:18 +0000 | ||
87 | tay, key pharms | tay, key pharms - An obviousness analysis involves two steps. “We first construe the claim, a question of law, and second we compare the construed claim to the prior art, a question of fact.” | 2020-11-19 09:16 +0000 | ||
88 | miller2 | miller2 - The printed matter on outside of cup determined to serve as a computing or mathematical recipe conversion device permitting a cook to perform calculations automatically with no further thought. | 2020-11-18 09:19 +0000 | ||
89 | ngai | ngai - adding instructions to a kit that describe a method of using it does not make the kit patentable over the same kit with a different set of instructions. | 2020-11-18 09:16 +0000 | ||
90 | vickers, cook2 | vickers, cook2 - A single embodiment may provide broad enablement in cases involving predictable factors, such as mechanical or electrical elements. | 2020-11-17 08:40 +0000 | ||
91 | warner | warner - A rejection based on section 103 clearly must rest on a factual basis. | 2020-11-16 09:09 +0000 | ||
92 | beineke | beineke - 1954 plant patent statutes extended to cover newly found seedlings, but only if they were somehow the result of human activity (i.e., the cultivation of the land on which they originated), and not the chance find of a plant explorer in the wild | 2020-11-10 07:58 +0000 | ||
93 | chemcast | chemcast - for best mode, if the inventor in fact contemplated a preferred mode, the second part of the analysis compares what the inventor knew to what the inventor disclosed | 2020-11-06 09:06 +0000 | ||
94 | smith3, Morris | smith3, Morris - the broadest reasonable interpretation differs from the broadest possible interpretation | 2020-11-04 09:17 +0000 | ||
95 | IGT | IGT - the term “predetermined event” is not indefinite because the plain and ordinary meaning is “defined in advance” | 2020-11-02 09:14 +0000 | ||
96 | schreiber | schreiber - Functional recitations provide for a compositional structure when a certain condition is met. A patent applicant is free to recite features of a composition either structurally or functionally. | claim const | REVERSED | 2020-10-30 09:06 +0000 |
97 | alza2 | alza2 - Patentability determinations "should be based on evidence rather than on mere speculation or conjecture." | 103 | REVERSED | 2020-10-29 08:55 +0000 |
98 | spormann | spormann - That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown. | 103 | REVERSED | 2020-10-28 09:37 +0000 |
99 | medradinc | medradinc - We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history. | claim const | REVERSED | 2020-10-23 08:25 +0000 |
100 | hubbell | hubbell - ordinarily does not connote invention to make in one piece what had previously been made in more than one piece, exceptions are where refs do not suggest, either separately or in combination, a novel structure, nor the useful results obtained | 103 | REVERSED | 2020-10-21 09:09 +0000 |
101 | nidec-kennametal | nidec, kennametal - under 102 cannot "fill in missing limitations" simply because a skilled artisan would immediately envision them from the prior art. | 102 | REVERSED | 2020-10-21 09:05 +0000 |
102 | chargepoint | chargepoint - in determining what claim is "directed to," the spec cannot be used to import details from the spec if those details are not claimed | 112(1) | AFFIRMED | 2020-10-16 08:11 +0000 |
103 | cox | cox - if paths which reach goal are different Examiner must provide analysis why the alternative path would have rendered obvious the claimed path. | 103 | REVERSED | 2020-10-14 09:51 +0000 |
104 | ruschig | ruschig - Appellants are pointing to trees. We are looking for blaze marks which single out particular trees. We see none. | 112(1) | REVERSED | 2020-10-13 09:43 +0000 |
105 | smith4 | smith4 - The disclosure of a genus does not necessarily implicitly describe every subgenus encompassed by that genus. | 112(1) | REVERSED | 2020-10-13 09:41 +0000 |
106 | geerdes | geerdes - considering rejection grounds "every limitation in the claim must be given effect rather than considering one in isolation from the others" | 103 | REVERSED | 2020-10-12 09:21 +0000 |
107 | gal | gal - so-called "design choice" rationale only deemed appropriate where one prior art element or property is proposed to be substituted for another that achieves the same purpose. | 103 | REVERSED | 2020-10-07 09:12 +0000 |
108 | cuozzo | cuozzo - grammar is one of a patent applicant's principal tools for "a fair chance to draft a precise claim." | claim const | REVERSED | 2020-10-06 09:04 +0000 |
109 | wilder | wilder - every limitation positively recited in a claim must be given effect. | claim const | REVERSED | 2020-10-05 09:32 +0000 |
110 | fenn | fenn - Although it is well settled that comparative test data showing an unexpected result will rebut a prima facie case of obviousness, the comparative testing must be between the claimed invention and the closest prior art. | 103 | AFFIRMED | 2020-09-30 07:55 +0000 |
111 | kemps | kemps - [T]he motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness. | 103 | AFFIRMED | 2020-09-28 09:41 +0000 |
112 | krippelz | krippelz - Th[e] [Federal Circuit] has repeatedly cautioned against overreliance on drawings that are neither expressly to scale nor linked to quantitative values in the specification. | 103 | REVERSED | 2020-09-25 07:49 +0000 |
113 | hansgirg-continental-can | hansgirg, continental can - Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. | 102 | REVERSED | 2020-09-18 09:06 +0000 |
114 | johnson-roberts2-fuetterer | johnson, roberts2, fuetterer - [o]ne does not look to claims to find out how to practice the invention they define, but to the specification. | 112(1)/112(2) | REVERSED | 2020-09-16 08:30 +0000 |
115 | brandt-patel | brandt, patel - prima facie rejections may be appropriate 'where there is a teaching in the prior art that the end points of the prior art range are approximate, or can be flexibly applied' | 103 | AFFIRMED | 2020-09-15 09:28 +0000 |
116 | perfect-surgical | perfect surgical - the absence of evidence that an inventor and his attorney revised or discussed the application on a daily basis is alone insufficient to determine that the invention was abandoned or unreasonably delayed. | 102 | REVERSED | 2020-09-14 09:10 +0000 |
117 | plasmart-wagner-mraz-seid | PlaSmart, wagner, mraz, seid - drawings can be used as prior art, w/out referring to the surrounding description, only if the prior art features are clearly disclosed, but each drawing doesn't always have to be viewed in isolation from rest of reference | prior art | REVERSED | 2020-09-04 09:19 +0000 |
118 | toro | toro - Where an explicit definition is provided by the applicant for a term, the definition will control interpretation of the term as it is used in the claim. | claim const | REVERSED | 2020-09-02 09:12 +0000 |
119 | ddr-holdings | DDR Holdings - to overcome 101, [a]lthough the claim[] address[es] a business challenge . . . it is a challenge particular to [network connectivity]. | 101 | REVERSED | 2020-09-01 09:12 +0000 |
120 | unwired | unwired - The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field. | prior art | AFFIRMED | 2020-08-31 09:42 +0000 |
121 | union-pac | union pac. - Even if the written description does not enable the claims, the claim language itself may still be definite. | 112(1) | REVERSED | 2020-08-28 08:46 +0000 |
122 | dillon | dillon - to make prima facie obviousness case based on structural similarity between claimed compound and compound disclosed by prior art, not only must structural similarity exist, but prior art must also provide reason or motivation to make compound | 103 | REVERSED | 2020-08-27 08:53 +0000 |
123 | par-pharmaceutical-stepan2 | par pharmaceutical, stepan2 - [T]he concept of inherency must be limited when applied to obviousness, and is present only when the limitation at issue is the "natural result" of the combination of prior art elements. | 103 | REVERSED | 2020-08-27 08:51 +0000 |
124 | nordt-3m | nordt, 3M - words of limitation that can connote with equal force a structural characteristic of the product or a process of manufacture are commonly and by default interpreted in their structural sense, unless the patentee has demonstrated otherwise. | claim const | REVERSED | 2020-08-26 09:13 +0000 |
125 | fujikawa | fujikawa - ipsis verbis disclosure is not necessary to satisfy the written description requirement of section 112 | 112(1) | REVERSED | 2020-08-25 08:58 +0000 |
126 | biomedino-medical-instrumentation | biomedino, medical instrumentation - "The duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under" 35 U.S.C. § 112(f). | 112(2) | AFFIRMED | 2020-08-21 08:46 +0000 |
127 | porter2 | porter - Examiner must provide sufficient evidence or technical reasoning to show that the result has no antecedent basis, rendering claim indefinite | 112(2) | REVERSED | 2020-08-18 09:08 +0000 |
128 | nordt | nordt - if a process limitation connotes specific structure, such structure should be considered | claim const | AFFIRMED | 2020-08-17 08:31 +0000 |
129 | bsg | BSG - It has been clear since Alice that a claimed invention's use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention "significantly more" than that ineligible concept. | 101 | REVERSED | 2020-08-12 08:55 +0000 |
130 | fenn | fenn - well settled that comparative test data showing an unexpected result will rebut a prima facie case of obviousness. | 103 | REVERSED | 2020-08-10 09:01 +0000 |
131 | eibel-sponnable-conrad | eibel, sponnable, conrad - the discovery of an unknown problem can result in a patentable invention, even if the solution would have been obvious once the problem is identified | 103 | REVERSED | 2020-08-07 09:12 +0000 |
132 | mbo | mbo - clear changes to the claim in addition to inventor??s declaration applicant claimed "less than we had a right to" sufficient notice of broadening | claim const/251 | REVERSED | 2020-08-04 08:51 +0000 |
133 | synopsys2 | synopsys2 - as an administrative agency, the PTAB "must articulate logical and rational reasons for [its] decisions" | 103 | REVERSED | 2020-08-03 08:39 +0000 |
134 | motor-vehicle | motor vehicle - The USPTO "must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made." | 103 | REVERSED | 2020-08-03 08:38 +0000 |
135 | mrc-high-point-cambell-soup-apple4 | MRC, high point, cambell soup, apple4 - A primary reference is a single reference creating basically the same visual impression as the claimed design. | 103 | REVERSED | 2020-07-31 09:14 +0000 |
136 | sonix | sonix - The Federal Circuit has "rejected the proposition that claims involving terms of degree are inherently indefinite." | 112(2) | REVERSED | 2020-07-30 09:02 +0000 |
137 | moore | moore - One is not in a position to determine whether a claim is enabled under the first paragraph of 35 U.S.C. § 112 until the metes and bounds of that claim are determined under the second paragraph of this section of the statute. | 112(1)/112(2) | REVERSED | 2020-07-29 08:23 +0000 |
138 | steele | steele - Board erred in affirming an obviousness rejection of indefinite claims because the rejection was based on speculative assumptions as to the meaning of the claims. | 112(2) | REVERSED | 2020-07-29 08:22 +0000 |
139 | paragon | paragon - Construing non-functional term in apparatus claim in way that makes infringement turn on use to which it is later put confuses rather than clarifies, frustrates patentee + potential infringer's ability to ascertain particular activity propriety | 112(2) | AFFIRMED | 2020-07-23 09:13 +0000 |
140 | cadence | cadence - [E]ven if all of the embodiments discussed in the patent included a specific limitation, it would not be proper to import from the patent's written description limitations that are not found in the claims themselves. | claim const | AFFIRMED | 2020-07-20 06:38 +0000 |
141 | smythe | smythe - it is almost always possible to construe a claim to have it read on inoperative embodiments, but alternative of requiring an applicant to be so specific as to exclude materials known to be inoperative would fail to comply with 35 U.S.C. §112(2) | 112(2) | REVERSED | 2020-07-17 02:59 +0000 |
142 | thorpe-garnero | garnero - where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product the structure implied by the process steps should be considered in product-by-process claims | claim const | REVERSED | 2020-07-14 08:25 +0000 |
143 | thorpe-garnero | thorpe - Product-by-process claims are generally not limited by the process used to make the product. | claim const | REVERSED | 2020-07-14 08:24 +0000 |
144 | scripps-clinic | scripps clinic - open-ended ranges may be enabled even if the inherent limit is 'not precisely known' | 112(1) | REVERSED | 2020-07-13 08:25 +0000 |
145 | autogiro | autogiro - In those instances where a visual representation can flesh out words, drawings may be used in the same manner and with the same limitations as the specification | 112(1) | AFFIRMED | 2020-07-10 08:37 +0000 |
146 | dynamic-drinkware-amgen4 | dynamic drinkware, amgen4 - reference patent only entitled to claim benefit of the filing date of its provisional application if disclosure of provisional application provides support for the claims in the reference patent in compliance with § 112, ¶ 1. | prior art | REVERSED | 2020-07-09 08:21 +0000 |
147 | yates2 | yates2 - In law as in life, . . . the same words, placed in different contexts, sometimes mean different things. | 101 | REVERSED | 2020-07-07 08:43 +0000 |
148 | lukach | lukach - when an explicit limitation in a claim is not present in the written description, it must be shown that a person of ordinary skill would have understood that the description requires that limitation | 112(1) | REVERSED | 2020-07-06 09:17 +0000 |
149 | trivascular | trivascular - construing the terms of a claim without considering the context in which those terms appear is not reasonable | claim const | REVERSED | 2020-07-02 07:52 +0000 |
150 | polaris-cutsforth-chicago | chicago - [t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. | 103 | REVERSED | 2020-06-16 08:55 +0000 |
151 | polaris-cutsforth-chicago | polaris, cutsforth - [m]erely stating that a particular [limitation] is a design choice does not make it obvious. | 103 | REVERSED | 2020-06-16 08:54 +0000 |
152 | merck | merck - Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. | 103 | AFFIRMED | 2020-06-02 06:48 +0000 |
153 | merck | merck - Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. | 103 | AFFIRMED | 2020-06-02 |
154 | 01 Communique | 01 Communique - As a general rule, the words 'a' or 'an' in a patent claim carry the meaning of 'one or more'. | 112(2) | AFFIRMED | 2020-05-20 |
155 | gottschalk, cochrane | gottschalk, cochrane - A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. | 112(2) | AFFIRMED | 2020-05-19 |
156 | chudik | chudik - prior art that must be modified to meet the disputed claim limitation does not anticipate the claim. | 102 | REVERSED | 2020-05-18 |
157 | wells | wells - Prior art that "must be distorted from its obvious design" does not anticipate a new invention. | 102 | REVERSED | 2020-05-18 |
158 | eli lilly3 | eli lilly3 - for 103 All relevant facts must be considered, while recognizing that it is inappropriate to "squeez[e] new factual situations into pre-established pigeonholes." | 103 | REVERSED | 2020-05-08 |
159 | blue calypso, kyocera | blue calypso, kyocera - A disclosure is public if it was "disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it." | prior art | REVERSED | 2020-04-30 |
160 | soni | soni - [W]hen an applicant demonstrates substantially improved results, as Soni did here, and states that the results are unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary. | 103 | REVERSED | 2020-04-29 |
161 | marco | marco - 101 "methods of organizing human activities" can be confusing and potentially misused, since a defined set of steps for combining particular ingredients to create a drug formulation could be categorized as a method of organizing human activity. | 101 | REVERSED | 2020-04-28 |
162 | hyatt | hyatt - the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production. | 103 | REVERSED | 2020-04-27 |
163 | smithkline2 | smithkline2 - "Judges are not like pigs, hunting for truffles buried in briefs." "[M]ere statements of disagreement . . . do not amount to a developed argument." | 103 | AFFIRMED | 2020-04-24 |
164 | takeda | takeda - [T]o demonstrate that a claimed compound would have been obvious, "a showing that the prior art would have suggested making the specific molecular modifications necessary to achieve the claimed invention [i]s also required." | 103 | REVERSED | 2020-04-23 |
165 | katz3, Hellbaum, Fried | katz3, Hellbaum, Fried - res judicata requires a showing of an identity of the issues presented for adjudication and the issues previously decided | res judicata | REVERSED | 2020-04-22 |
166 | net moneyin | net moneyin - In an anticipation rejection, "it is not enough that the prior art reference . . . includes multiple, distinct teachings that [an] artisan might somehow combine to achieve the claimed invention." | 102 | REVERSED | 2020-04-20 |
167 | smith3 | smith3 - "'[T]he protocol of giving claims their broadest reasonable interpretation . . . does not include giving claims a legally incorrect interpretation' 'divorced from the specification and the record evidence.'" | claim const | REVERSED | 2020-04-17 |
168 | Industrial chemicals, Antares Pharma, Forum US | Industrial chemicals, Antares Pharma, Forum US - [i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original. | 251 | AFFIRMED | 2020-04-16 |
169 | apator, NTP | apator, NTP - pre-AIA, inventor can effectively swear behind reference by establishing (1) conception and (2) diligence in achieving reduction to practice prior to reference's date. Swearing behind requires evidence corroborating any inventor testimony. | prior art | REVERSED | 2020-04-15 |
170 | outdry | outdry - Any motivation, "whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient." | 103 | AFFIRMED | 2020-04-13 |
171 | gershon | gershon - Since the alleged problem was first recognized, and others have not yet become aware of its existence, could not possibly be any evidence of a long felt need in the . . . art for a solution | 103 | AFFIRMED | 2020-04-10 |
172 | wood | wood - "[I]t is necessary to consider 'the reality of the circumstances,' --in other words, common sense--in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor." | 103 | AFFIRMED | 2020-04-08 |
173 | heck, lemelson | heck, lemelson - The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. | prior art | AFFIRMED | 2020-04-01 |
174 | alza2 | alza2 - [L]egal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture. | 103 | REVERSED | 2020-03-31 |
175 | innova | innova - [W]hen an applicant uses different terms in a claim it is permissible to infer that [the] different terms [] reflect a differentiation in the meaning of those terms. | claim const | REVERSED | 2020-03-30 |
176 | nuvasive | nuvasive - although the court will uphold a PTO "decision of less than ideal clarity," the PTO's path to its decision must be such that it "may reasonably be discerned." | 103 | REVERSED | 2020-03-27 |
177 | moore | moore - the test for determining the question of indefiniteness may be formulated as whether the claims "set out and circumscribe a particular area with a reasonable degree of precision and particularity." | 112(2) | AFFIRMED | 2020-03-26 |
178 | stepan2 | stepan2 - [a]bsent some additional reasoning, the Board's finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness. | 103 | REVERSED | 2020-03-25 |
179 | 318 Patent | 318 Patent - The enablement requirement prevents mere ideas from being patented. | 112(1) | REVERSED | 2020-03-23 |
180 | goodman | goodman - Whether making and using the claimed invention would have required undue experimentation, such that claims were not sufficiently enabled by the Specification, is a legal conclusion based upon underlying facts. | 112(1) | REVERSED | 2020-03-23 |
181 | atlas powder | atlas powder - [T]he discovery of . . . a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer. | claim const | AFFIRMED | 2020-03-20 |
182 | einstein | einstein - a mere reversal of the essential working parts of a previously patented device did not constitute invention. | 103 | AFFIRMED | 2020-03-18 |
183 | vasudevan | vasudevan - [a]n applicant's use of the phrase 'refers to' generally indicates an intention to define a term. | claim const | REVERSED | 2020-03-17 |
184 | vaidyanathan, Universal Camera | vaidyanathan, Universal Camera - contradictory findings of technological facts based on shifting perceptions of the prior art impeach the deference normally owed to administrative findings of fact | prior art | REVERSED | 2020-03-13 |
185 | intelligent | intelligent - The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention. | 103 | REVERSED | 2020-03-12 |
186 | chilowski | chilowski - While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive. | 103 | REVERSED | 2020-03-11 |
187 | lindell | lindell - Although an affiant's or declarant's opinion on the ultimate legal issue is not evidence in the case, "some weight ought to be given to a persuasively supported statement of one skilled in the art on what was not obvious to him." | 103 | REVERSED | 2020-03-11 |
188 | lalu | lalu - determining that utility of prior art compounds as intermediates did not provide a motivation sufficient to support obviousness rejection based on structural similarity | 103 | REVERSED | 2020-03-10 |
189 | soni | soni - when an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary. | 103 | REVERSED | 2020-03-09 |
190 | riverwood | riverwood - Valid prior art may be created by the admissions of the parties | prior art | AFFIRMED | 2020-03-06 |
191 | dow chemical2 | dow chemical2 - Selective hindsight is no more applicable to the design of experiments than it is to the combination of prior art teachings. | 103 | REVERSED | 2020-03-05 |
192 | gerber | gerber - Consonance requires that the line of demarcation between the "independent and distinct inventions" that prompted the restriction requirement be maintained. | claim const | REVERSED | 2020-03-04 |
193 | symbol tech. | symbol tech. - new or amended claims in a divisional application are entitled to the benefit of § 121 if the claims do not cross the line of demarcation drawn around the invention elected in the restriction requirement. | claim const | REVERSED | 2020-03-04 |
194 | Koninklijke | Koninklijke - software inventions [were found] to be patent-eligible where they have made non-abstract improvements to existing technological processes and computer technology | 101 | REVERSED | 2020-03-03 |
195 | petering | petering - to anticipate, one skilled in the art must be able to "at once envisage" the claimed subject matter in the prior art disclosure | 102 | REVERSED | 2020-03-02 |
196 | anchor wall, ecolab, pall corp. | anchor wall, ecolab, pall corp. - a term of approximation, such as 'substantially,' is a descriptive term "commonly used in patent claims 'to avoid a strict numerical boundary to the specified parameter.'" | claim const | REVERSED | 2020-02-27 |
197 | galderma | galderma - Unexpected results that are probative of nonobviousness are those that are different in kind and not merely in degree from the results of the prior art. | 103 | REVERSED | 2020-02-26 |
198 | grain processing, orthopedic | grain processing, orthopedic - must avoid hindsight reconstruction by using "the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit." | 103 | REVERSED | 2020-02-24 |
199 | inline | inline - [T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. | claim const | AFFIRMED | 2020-02-24 |
200 | dippin' dots, spectrum | dippin' dots, spectrum - 'comprising' is not a weasel word with which to abrogate claim limitations | claim const | REVERSED | 2020-02-21 |
201 | samsung, diamond, nuijten | samsung, diamond, nuijten - Manufactures also include "the parts of a machine considered separately from the machine itself." | 101 | REVERSED | 2020-02-20 |
202 | fenner, retractable | fenner, retractable - Any explanation, elaboration, or qualification presented by the inventor during patent examination relevant, the role of claim construction is to "capture the scope of the actual invention" that is disclosed, described, and patented | claim construction | REVERSED | 2020-02-20 |
203 | sneed, nievelt | nievelt - Combining the teachings of references does not involve an ability to combine their specific structures. | 103 | AFFIRMED | 2020-02-19 |
204 | sneed, nievelt | sneed - It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review. | 103 | AFFIRMED | 2020-02-19 |
205 | multilayer | multilayer - a dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid. | claim construction | AFFIRMED | 2020-02-14 |
206 | Koninklijke | Koninklijke - software inventions [are] . . . patent-eligible where they have made non-abstract improvements to existing technological processes and computer technology | 101 | REVERSED | 2020-02-12 |
207 | miller | miller - The legal principle has been long and clearly established that breadth of a claim is not to be equated with indefiniteness. | 112(2) | REVERSED | 2020-02-10 |
208 | parks | parks - adequate written description does not require literal support for the claimed invention. Rather, it is sufficient if the originally-filed disclosure would have conveyed to POSITA that an appellant had possession of the concept of what is claimed. | 112(1) | REVERSED | 2020-02-07 |
209 | falko-gunter, halogic | halogic - Appellant may also rely on that which is "well-known in the art" to meet [written description] requirement. | 112(1) | REVERSED | 2020-02-05 |
210 | falko-gunter, halogic | falko-gunter - The Specification is viewed from the perspective of one of ordinary skill. | 112(1) | REVERSED | 2020-02-05 |
211 | danly | danly - Claims drawn to an apparatus must distinguish from the prior art in terms of structure rather than function | claim construction | REVERSED | 2020-02-04 |
212 | yeda | yeda - when spec describes an invention that has certain undisclosed yet inherent properties, serves as adequate written description to support a subsequent application that explicitly recites invention's inherent properties. | 112(1) | REVERSED | 2020-02-03 |
213 | polaris | polaris - even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to modify the reference in the manner claimed | 103 | REVERSED | 2020-01-31 |
214 | minerals | minerals - The standard for determining whether the specification meets the enablement requirement: is the experimentation needed to practice the invention undue or unreasonable? | 112(1) | REVERSED | 2020-01-30 |
215 | dystar | dystar - [T]he desire to enhance commercial opportunities by improving a product or process is universal and even common-sensical. | 103 | AFFIRMED | 2020-01-17 |
216 | sporck | sporck - The Patent Office . . . may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. | 103 | REVERSED | 2020-01-16 |
217 | sanofi | sanofi - To anticipate, the reference must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements arranged as in the claim. | 102 | REVERSED | 2020-01-15 |
218 | natural, diamond | natural, diamond - A claim to a manufacture or composition of matter made from a natural product is not directed to the natural product where it has different characteristics and the potential for significant utility. | 101 | REVERSED | 2020-01-13 |
219 | k-tec, bigio | bigio - the analogous art "test does not make the assessment of the field of endeavor a wholly subjective call for the examiner." | 103 | REVERSED | 2020-01-10 |
220 | k-tec, bigio | k-tec - To qualify as prior art for 103, must qualify as "analogous art," (1) it must be from same field of endeavor; or (2) it must be reasonably pertinent to particular problem with which inventor is involved | 103 | REVERSED | 2020-01-10 |
221 | Brown & Williamson | Brown & Williamson - In addition to considering whether POSITA would have been motivated to combine prior art to achieve claimed invention, must also determine whether there would have been a reasonable expectation of success in doing so. | 103 | REVERSED | 2020-01-09 |
222 | orexo | orexo - in determining whether prior art's combined teachings would have suggested the specific combination of features recited in claim at issue, inappropriate to use the template provided by the inventor, to render the inventor's contribution obvious. | 103 | REVERSED | 2020-01-08 |
223 | stepan2 | stepan2 - [a]bsent some additional reasoning, . . . [a] finding that a skilled artisan would have arrived at the claimed invention through routine optimization is insufficient to support a conclusion of obviousness. | 103 | REVERSED | 2020-01-06 |
224 | sinclair | sinclair - Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put into the last opening in a jig-saw puzzle. It is not invention. | 103 | REVERSED | 2019-12-31 |
225 | mcdaniel | mcdaniel - It is well settled that 'anticipation is the epitome of obviousness.' | 102 | AFFIRMED | 2019-12-27 |
226 | alton | alton - if POSITA would have understood the inventor to have been in possession of the claimed invention at the time of filing, even if every nuance of the claims not explicitly described in spec, then the adequate written description requirement is met. | 112(1) | REVERSED | 2019-12-26 |
227 | schulpen, multilayer | multilayer - When the phrase 'consists of' appears in a clause in the claim body, rather than immediately following the preamble, there is an "exceptionally strong presumption that a claim term set off with 'consisting of' is closed to unrecited elements." | 103 | REVERSED | 2019-12-25 |
228 | schulpen, multilayer | schulpen - an obviousness rejection cannot stand when the modification proposed by the Examiner would run counter to the teaching of a prior art reference | 103 | REVERSED | 2019-12-25 |
229 | daiichi | daiichi - [T]he lead compound analysis must, in keeping with KSR, not rigidly focus on the selection of a single, best lead compound. | 103 | REVERSED | 2019-12-23 |
230 | johnston, irdeto, abbott diabetes | irdeto, abbott diabetes - Even when guidance is not provided in explicit definitional format, the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents. | claim construction | REVERSED | 2019-12-20 |
231 | johnston, irdeto, abbott diabetes | johnston - dictionary definitions must give way to the meaning imparted by the specification. | claim construction | REVERSED | 2019-12-20 |
232 | rowe | rowe - [W]here a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation. | claim construction | REVERSED | 2019-12-18 |
233 | enzo, hybritech | hybritech - Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention. | 112(1) | REVERSED | 2019-12-17 |
234 | enzo, hybritech | enzo - the written description requirement is met when the disclosure "allow[s] one skilled in the art to visualize or recognize the identity of the subject matter purportedly described." | 112(1) | REVERSED | 2019-12-17 |
235 | slayter | slayter - It is well settled that a generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus. | 102 | AFFIRMED | 2019-12-16 |
236 | vizio, jasinski | jasinski - claim language that provided criteria to analyze other limitations limiting, rather than an intended use | claim construction | REVERSED | 2019-11-29 |
237 | vizio, jasinski | vizio - 'for decoding' . . . is properly construed as a claim limitation, and not merely a statement of purpose or intended use for the invention, because 'decoding' is the essence or a fundamental characteristic of the claimed invention. | claim construction | REVERSED | 2019-11-29 |
238 | edge | edge - To the contrary, "the omission of an element and retention of its function is an indicia of unobviousness." | 103 | REVERSED | 2019-11-28 |
239 | king2, Ackenbach | king2, Ackenbach - A reference may inherently disclose a process limitation if a prior art device "necessarily functions in accordance with the [claim] limitations" while the device is used in its "normal and usual operation." | 103 | REVERSED | 2019-11-27 |
240 | falko-gunter, halogic | falko-gunter - Appellant may rely on that which is "well-known in the art" for meeting the written description requirement. | 112(1) | REVERSED | 2019-11-26 |
241 | falko-gunter, halogic | halogic - if the field of the invention is a predictable art ... a lower level of detail is required to satisfy the written description requirement than for unpredictable arts. | 112(1) | REVERSED | 2019-11-26 |
242 | scripps clinic | scripps clinic - [o]pen-ended [ranges in] claims are not inherently improper | 112(1) | REVERSED | 2019-11-25 |
243 | perfect surgical | perfect surgical - Reasonable diligence must be shown throughout the entire critical period, which begins just prior to the competing reference's effective date and ends on the date of the invention's reduction to practice. | prior art | REVERSED | 2019-11-22 |
244 | diamond1 | diamond1 - A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula. | 101 | REVERSED | 2019-11-21 |
245 | mills | mills - a reference is not limited to the disclosure of specific working examples | 103 | AFFIRMED | 2019-11-20 |
246 | seaway, gorham | gorham - two designs substantially the same if in the eye of an ordinary observer, giving such attention as a purchaser usually gives, . . . the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other. | 102 | REVERSED | 2019-11-19 |
247 | seaway, gorham | seaway - The sole test for anticipation in design patents is the "ordinary observer test." | 102 | REVERSED | 2019-11-19 |
248 | leshin | leshin - We do not understand Leshin to stand for the proposition that every claim feature involving a selection of materials is per se obvious. | 103 | REVERSED | 2019-11-18 |
249 | pharmastem | An obviousness rejection predicated on selection of one or more components from numerous possible choices may be appropriate if the prior art provides direction as to which of many possible choices is likely to be successful. | 103 | REVERSED | 11/15/2019 |
250 | hyatt4 | [T]he written description must include all limitations . . ., or the applicant must show that any absent text is necessarily comprehended in the description provided and would have been so understood at the time the patent application was filed. | 112(1) | AFFIRMED | 11/13/2019 |
251 | clearstream | Under the doctrine of claim differentiation, it is presumed that different words used in different claims result in a difference in meaning and scope for each of the claims. | claim interpretation | REVERSED | 11/12/2019 |
252 | seid | The predecessor to our reviewing court has held that "an accidental disclosure, if clearly made in a drawing, is available as a reference." | 103 | REVERSED | 11/11/2019 |
253 | bager | [d]escription for the purposes of anticipation can be by drawings alone as well as by words. | 112(1) | REVERSED | 11/08/2019 |
254 | ecolochem | Defining the problem in terms of its solution reveals improper hindsight in the selection of the prior art relevant to obviousness. | 103 | REVERSED | 11/07/2019 |
255 | metalcraft | [W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention. | 103 | REVERSED | 11/07/2019 |
256 | st. jude | Even under [the] "expansive and flexible" obviousness analysis [of KSR], we must guard against "hindsight bias" and "ex post reasoning." | 103 | REVERSED | 11/06/2019 |
257 | van os | a conclusory statement is not enough to satisfy the Examiner's duty to provide a reasoned explanation for combining | 103 | REVERSED | 11/06/2019 |
258 | synopsys2 | as an administrative agency, the PTAB "must articulate logical and rational reasons for [its] decisions" | 103 | REVERSED | 11/05/2019 |
259 | kustom signals | The open-ended transition "comprising" does not free the claim from its own limitations. | 103 | REVERSED | 10/31/2019 |
260 | kustom signals | kustom signals - The open-ended transition ‘comprising’ does not free the claim from its own limitations. | claim const | REVERSED | 10/31/2019 |
261 | bristol-myers | bristol-myers - [n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent. | 102 | AFFIRMED | 10/30/2019 |
262 | recognicorp | recognicorp - [A]n inventive concept must be evident in the claims. | 101 | REVERSED | 10/29/2019 |
263 | eynde | eynde - Materials submitted to prove enablement must be factual evidence such as patents, publications, and affidavits. | 112(1) | AFFIRMED | 10/28/2019 |
264 | al-site | Al-Site - It is well settled that rarely, if ever, does skill in the art operate to supply missing knowledge or prior art to reach an obviousness judgment. | 103 | REVERSED | 10/25/2019 |
265 | ryko | Ryko - skill in the art does not act as a bridge over gaps in the substantive presentation of an obviousness case | 103 | REVERSED | 10/25/2019 |
266 | patel | patel - When differences clearly exist and there is no evidence that they are either not meaningful or one of skill in the art would know to discard the limits set by the prior art, proximity alone not enough to establish a prima facie case of obviousness | 103 | REVERSED | 10/24/2019 |
267 | geisler | geisler - Technical assertions unsupported by factual evidence are not persuasive. | 103 | AFFIRMED | 10/23/2019 |
268 | pearson | pearson - It has long been established that attorney’s arguments in a brief cannot take the place of evidence. | 103 | AFFIRMED | 10/23/2019 |
269 | microsoft3 | microsoft3 - Being directed to the same art or same technique is inadequate to supply a reason to combine. | 103 | REVERSED | 10/22/2019 |
270 | martin, jepson, lockwood | martin, jepson, lockwood - not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure . . . it is a question whether the application necessarily discloses that particular device. | prior art | REVERSED | 10/21/2019 |
271 | apple3 | apple3 - even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference” in the manner claimed. | 103 | REVERSED | 10/9/2019 |
272 | polaris, ashland-oil | polaris, ashland oil - a reference ‘must [be] considered for all it taught, disclosures that diverged and taught away from the invention at hand as well as disclosures that pointed towards and taught the invention at hand.’ | 103 | REVERSED | 10/9/2019 |
273 | polaris, ricoh | polaris, ricoh - A reference may be said to teach away when a POSITA, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. | 103 | REVERSED | 10/9/2019 |
274 | brummer | brummer - indefinite because one would be at a loss to determine whether a particular [apparatus] is covered by [the] claim. | 112(2) | AFFIRMED | 10/8/2019 |
275 | homeland | homeland - a [claim] construction that would require empirical testing is incorrect. | 112(2) | AFFIRMED | 10/8/2019 |
276 | ipxl | IPXL - “a single claim covering both an apparatus and a method of use of that apparatus” fails to meet the requirements of § 112 | 112(2) | AFFIRMED | 10/8/2019 |
277 | purdue pharma | purdue pharma - a characteristic that is not discussed even in passing in the disclosure is exactly the type of overreaching the written description requirement was designed to guard against. | 112(1) | AFFIRMED | 10/4/2019 |
278 | eibel, purdue pharma2 | eibel, purdue pharma2 - Discovery of a problem that was previously unrecognized can show that a solution to that problem would not have been obvious. | 103 | REVERSED | 10/3/2019 |
279 | wbip | WBIP - Whether a person of ordinary skill would have been motivated to modify the teachings of a reference is a question of fact. | 103 | REVERSED | 10/2/2019 |
280 | malagari | malagari - claimed invention is rendered prima facie obvious by the teachings of a prior art reference that discloses a range that touches the range recited in the claim | 103 | AFFIRMED | 9/27/2019 |
281 | motor vehicle | motor vehicle - The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” | 103 | REVERSED | 9/9/2019 |
282 | allergan | allergan - a claim that recites a property that is necessarily inherent in a formulation that is adequately described is not invalid as lacking written description merely because the property itself is not explicitly described. | 112(1) | AFFIRMED | 9/2/2019 |
283 | arkley | arkley - [P]icking and choosing may be entirely proper in the making of a 103, obviousness rejection, ... but it has no place in the making of a 102, anticipation rejection. | 102 | REVERSED | 8/30/2019 |
284 | noll, bernhart | bernhart - "[I]f a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed." | 103 | REVERSED | 8/29/2019 |
285 | noll, bernhart | noll - holding that a "programmed machine is structurally different from a machine without that program." | 103 | REVERSED | 8/29/2019 |
286 | vizio | vizio - The 'for decoding' language ... is properly construed as a limitation, and not merely a statement of purpose or intended use for the invention, because 'decoding' is the essence or a fundamental characteristic of the claimed invention. | claim const | REVERSED | 8/28/2019 |
287 | plantronics | plantronics - the mere fact that elements separately existed in the cited prior art is not sufficient to render the invention obvious; for a legal conclusion of obviousness to be proper, there must be proof of a legally sufficient "reason to combine" | 103 | REVERSED | 8/27/2019 |
288 | barker | barker - That a person skilled in the art might realize from reading the disclosure that such a feature is possible is not a sufficient indication that the feature is a part of the invention. | 112(1) | AFFIRMED | 8/22/2019 |
289 | htc2, becton | The separate naming of two structures in the claim strongly implies that the named entities are not one and the same structure. | claim const | REVERSED | 8/20/2019 |
290 | sullivan | Whether the composition would have been obvious cannot be determined without considering evidence attempting to rebut the prima facie case. | 102 | REVERSED | 8/16/2019 |
291 | IPXL, mastermine | "[R]eciting both an apparatus and a method of using that apparatus renders a claim indefinite" because it is unclear when infringement occurs. | 112(2) | REVERSED | 8/15/2019 |
292 | oakley | Determining patentability is a two-step process. The first step is to construe the claims, and the second step involves comparing the claims with the prior art. | 102 | REVERSED | 8/14/2019 |
293 | dynamic drinkware | A reference patent is only entitled to claim the benefit of the filing date of its provisional application if the disclosure of the provisional application provides support for the claims in the reference patent in compliance with [section] 112, [paragraph] 1. | prior art | REVERSED | 8/13/2019 |
294 | wasica, turlay | It is well established that an anticipation rejection cannot be predicated on an ambiguous reference. | 103 | REVERSED | 8/7/2019 |
295 | jockmus, mraz | Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. However, the picture must show all the claimed structural features and how they are put together. | 103 | REVERSED | 8/2/2019 |
296 | personalweb | that a skilled artisan would understand two references could be combined is not enough: it does not imply a motivation to pick out those two references and combine them to arrive at the claimed invention | 102 | REVERSED | 8/1/2019 |
297 | baird | [t]he fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious. | 102 | REVERSED | 7/30/2019 |
298 | fiers, amgen | Adequate written description requires more than a mere statement that it is part of the invention and reference to a potential method of isolating it. The compound itself is required. | 112(1) | REVERSED | 7/29/2019 |
299 | meng | a claimed invention may be anticipated or rendered obvious by a drawing in a reference, whether the drawing disclosure be accidental or intentional. | 102 | REVERSED | 7/26/2019 |
300 | TF3 | [I]t is not reasonable to read the claims more broadly than the description in the [S]pecification. | claim const | REVERSED | 7/25/2019 |
301 | borkowski2 | the Specification need not contain an example if the invention is otherwise disclosed in such a manner that one of ordinary skill in the art will be able to practice it without an undue amount of experimentation | 112(1) | REVERSED | 7/24/2019 |
302 | dailey | a mere change in shape of an element is generally recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the element. | 102 | REVERSED | 7/23/2019 |
303 | cook | [t]o incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. | prior art | REVERSED | 7/22/2019 |
304 | daiichi | daiichi - proving a reason to select a compound as a lead compound depends on more than just structural similarity, but also knowledge in the art of the functional properties and limitations of the prior art compounds. | 102 | REVERSED | 7/12/2019 |
305 | otsuka | otsuka - Absent a reason or motivation based on such prior art evidence [of the proposed lead compound's pertinent properties], mere structural similarity between a prior art compound and the claimed compound does not inform the lead compound selection. | 102 | REVERSED | 7/12/2019 |
306 | keller | The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference ... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. | 102 | REVERSED | 7/5/2019 |
307 | nievelt | Combining the teachings of references does not involve an ability to combine their specific structures. | 102 | REVERSED | 7/5/2019 |
308 | sneed | [I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review. | 102 | REVERSED | 7/5/2019 |
309 | sebek | where the prior art indicates that an optimum should be sought within a range, the determination of optimum values outside that range may not be obvious | 102 | REVERSED | 7/4/2019 |
310 | howmedica2 | there are strict requirements before a finding of inherent anticipation is made. Indeed, inevitability is at the heart of inherency. | 102 | REVERSED | 7/3/2019 |
311 | arlington, mbo | Patent coverage is not necessarily limited to inventions that look like the ones in the figures. To hold otherwise would be to import limitations onto the claim from the specification, which is fraught with danger. | claim const | REVERSED | 7/2/2019 |
312 | two-way media | Our reviewing court further guides that "[e]ligibility and novelty are separate inquiries." | 101 | REVERSED | 6/28/2019 |
313 | johnson3 | a patent applicant defines his invention in the claims, not in the specification. | 112(1) | REVERSED | 6/27/2019 |
314 | generation II | [C]laims can only be construed to preserve their validity where the proposed claim construction ... does not revise or ignore the explicit language of the claims. | 112(2) | REVERSED | 6/27/2019 |
315 | elkay | When multiple patents derive from the same initial application, the prosecution history regarding a claim limitation in any patent that has issued applies with equal force to subsequently issued patents that contain the same claim limitation. | claim const | AFFIRMED | 6/25/2019 |
316 | nystrom | Precise proportions should not be read into patent drawings when the patent does not expressly provide such proportions. | 102 | REVERSED | 6/21/2019 |
317 | morris | [i]t is the applicants' burden to precisely define the invention, not the PTO's. See 35 U.S.C. § 112 ¶ 2 . . . . [T]his section puts the burden of precise claim drafting squarely on the applicant. | 112(2) | REVERSED | 6/19/2019 |
318 | diamond1, bergy | [t]he question [] of whether a particular invention is novel is 'wholly apart from whether the invention falls into a category of statutory subject matter. | 102 | REVERSED | 6/18/2019 |
319 | saab | A prima facie case is established when the party with the burden of proof points to evidence that is sufficient, if uncontroverted, to entitle it to prevail as a matter of law. | 102 | REVERSED | 6/17/2019 |
320 | research corp | inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act. | 101 | REVERSED | 6/14/2019 |
321 | cofer | [I]t is facts appearing in the record, rather than prior decisions in and of themselves, which must support the legal conclusion of obviousness. | 103 | REVERSED | 6/13/2019 |
322 | abbott labs3 | the claim's context as a whole provides the proper framework for claim construction. | claim const | REVERSED | 6/11/2019 |
323 | McAward, packard | [a] claim is indefinite when it contains words or phrases whose meaning is unclear. | 112(2) | AFFIRMED | 6/10/2019 |
324 | phillips | Phillips - The claims, of course, do not stand alone. Rather, they are part of a "fully integrated written instrument" ... consisting principally of a specification that concludes with the claims. | claim const | REVERSED | 6/6/2019 |
325 | lindemann | lindemann - The claimed invention must be considered as a whole, and the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination. | 103 | REVERSED | 6/5/2019 |
326 | giannelli | giannelli - 'the phrase 'adapted to' is frequently used to mean 'made to,' 'designed to,' or 'configured to,' ... [a]lthough the phrase can also mean 'capable of or 'suitable for.' | claim const | REVERSED | 6/4/2019 |
327 | hutchison | hutchison - functional recitations do not carry patentable weight in product claims | claim const | REVERSED | 6/4/2019 |
328 | typhoon-touch, fantasy sports | typhoon touch, fantasy sports - Where claim directed to apparatus that must be specifically programmed to perform a function, infringement may not be based upon a finding that an accused product merely capable of being modified in a manner that infringes | 103 | REVERSED | 6/3/2019 |
329 | accorda, hoffmann | accorda, hoffmann - Conclusive proof of efficacy is not necessary to show obviousness. However, "the evidentiary basis for an inference of reasonable expectation of success may be inadequate." | 103 | REVERSED | 5/31/2019 |
330 | o'farrell, kubin | o'farrell, kubin - Obviousness does not require absolute predictability of success ... all that is required is a reasonable expectation of success. | 103 | REVERSED | 5/31/2019 |
331 | merck2 | merck2 - A multitude of effective combinations does not render any particular formulation less obvious. | 103 | REVERSED | 5/30/2019 |
332 | unigene, bayer4 | unigene, bayer4 - the "prior art cannot be 'vague' and must collectively, although not explicitly, guide an artisan of ordinary skill towards a particular solution," | 103 | REVERSED | 5/30/2019 |
333 | interval | interval - Had [a certain] phrase been cast as a definition instead of as an example-if the phrase had been preceded by "i.e." instead of "e.g."-then it would help provide the clarity that the specification lacks. | 103 | REVERSED | 5/29/2019 |
334 | ruff | ruff - substitution of one equivalent for another is obvious only where equivalency is known in the prior art | 103 | REVERSED | 5/28/2019 |
335 | sensonics, interconnect | sensonics, interconnect - The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made. | 103 | REVERSED | 5/28/2019 |
336 | hubbel | hubbel - An improper timewise extension is only one of the justifications for ODP doctrine. Another "rationale is to prevent multiple infringement suits by different assignees asserting essentially the same patented invention." | 103 | AFFIRMED | 5/27/2019 |
337 | smart-sys-enfish | smart sys, enfish - First, it is always important to look at the actual language of the claims ... . Second, in considering the roles played by individual limitations, it is important to read the claims 'in light of the specification.' | 101 | REVERSED | 5/24/2019 |
338 | bicon | bicon - Claims are interpreted with an eye toward giving effect to all terms in the claim. | claim const | REVERSED | 5/23/2019 |
339 | allied-erecting-medichem | allied erecting, medichem - a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. | 103 | AFFIRMED | 5/22/2019 |
340 | classco | classco - The rationale of KSR does not support [the] theory that a person of ordinary skill can only perform combinations of a puzzle element A with a perfectly fitting puzzle element B. | 103 | AFFIRMED | 5/21/2019 |
341 | sneed | sneed - It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review. | 103 | AFFIRMED | 5/20/2019 |
342 | atofina | atofina - the claimed subject matter must be disclosed in the reference with sufficient specificity in order to constitute an anticipation | 102 | REVERSED | 5/17/2019 |
343 | mangosoft | mangosoft - rejecting a claim construction that "ascribes no meaning to the term ... not already implicit in the rest of the claim" | claim const | REVERSED | 5/15/2019 |
344 | pfizer2-medichem | pfizer2, medichem - To have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result. | 103 | REVERSED | 5/9/2019 |
345 | eibel | eibel- mathematical processes incorporated into a specific device may implement the judicial exception with, and use a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim. | 101 | REVERSED | 5/8/2019 |
346 | greenliant | greenliant - If process steps of product-by-process claim result in a product that is structurally or functionally different from that disclosed in the prior art, then the claims are not unpatentable | claim const | REVERSED | 5/6/2019 |
347 | scimed | scimed - Where spec makes clear invention does not include particular feature, it is deemed outside the reach of the claims, even though the language of the claims, read without reference to spec, might be considered broad enough to encompass the feature. | prior art | REVERSED | 5/3/2019 |
348 | amgen2 | amgen2 - The standard of indefiniteness is somewhat high; a claim is not indefinite merely because its scope is not ascertainable from the face of the claims. | 112(2) | REVERSED | 5/2/2019 |
349 | aller-rose | rose - changing size of the article under consideration not ordinarily a matter of invention, but changing the relative sizes of component parts may be. | 103 | REVERSED | 4/30/2019 |
350 | aller-rose | aller - modification involving discovering the optimum or working ranges involves only routine skill in the art | 103 | REVERSED | 4/30/2019 |
351 | pall-corp-cohesive-tech | cohesive tech - Use of the word about as part of a numeric range avoids a strict numerical boundary to the specified parameter. | claim const | REVERSED | 4/26/2019 |
352 | pall-corp-cohesive-tech | pall corp. - [T]he word 'about' does not have a universal meaning in patent claims, and [its] meaning depends on the technological facts of the particular case. | claim const | REVERSED | 4/26/2019 |
353 | engel2 | engel2 - construing separate claim terms as reciting separate structures | claim const | REVERSED | 4/25/2019 |
354 | nuvasive | nuvasive - conclusory statement is insufficient to support obviousness | 103 | REVERSED | 4/24/2019 |
355 | fisher2 | fisher2 - In mechanical or electrical cases a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws | 112(1) | REVERSED | 4/23/2019 |
356 | thales | thales - it is not enough to merely identify a patent ineligible concept underlying the claim; we must determine whether the patent-ineligible concept is what the claim is 'directed to. | 101 | REVERSED | 4/22/2019 |
357 | transocean | transocean - [I]t is not enough to simply show that the [prior art] references disclose the claim limitations. | 103 | REVERSED | 4/19/2019 |
358 | dystar | dystar - "[w]e will not read into a reference a teaching away from a process where no such language exists." | 103 | AFFIRMED | 4/18/2019 |
359 | geisler | geisler - An applicant may overcome a prima facie case of obviousness by establishing "that the [ claimed] range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." | 103 | REVERSED | 4/16/2019 |
360 | abbvie2 | abbvie2 - it is well-settled that a narrow species can be non-obvious and patent-eligible despite a patent on its genus. | 103 | REVERSED | 4/15/2019 |
361 | ucb-abbvie2 | UCB - two steps in an OTDP analysis: First, we construe the claims of the earlier patent and the claims on appeal and determine the differences between the two. Second, we determine whether the differences render the claims "patentably distinct." | OTDP | REVERSED | 4/15/2019 |
362 | smith3-morris | smith3, Morris - the broadest reasonable interpretation differs from the broadest possible interpretation. | claim const | REVERSED | 4/12/2019 |
363 | gay | gay - Not every last detail is to be described, else patent specifications would tum into production specifications, which they were never intended to be. | 112(1) | REVERSED | 4/11/2019 |
364 | poweroasis | poweroasis - the written-description statute "requires that the written description actually or inherently disclose the claim element." | 112(1) | AFFIRMED | 4/10/2019 |
365 | stepan2-honeywell2 | honeywell2 - the burden is on the Examiner to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation of success | 103 | REVERSED | 4/9/2019 |
366 | stepan2-honeywell2 | stepan2 - it was the PTO's-not Stepan's-burden to show that achieving [claim limitation] would have been obvious to a person of ordinary skill in the art. | 103 | REVERSED | 4/9/2019 |
367 | urbanski | urbanski - One of ordinary skill in the art may be motivated to pursue the desirable properties taught by one reference, even if that means foregoing the benefit taught by another reference. | 103 | AFFIRMED | 4/8/2019 |
368 | depuy-spine-fulton | depuy spine, fulton - The disclosure of an alternative, albeit inferior, solution does not amount to a teaching away. | 103 | REVERSED | 4/3/2019 |
369 | wilder2 | wilder2 - Affirming a rejection for lack of written description because the specification does "little more than outlining goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate." | 112(1) | AFFIRMED | 4/1/2019 |
370 | pro-mold | pro-mold - It is well-established that before a conclusion of obviousness may be made based on a combination of references, there must have been a reason, suggestion, or motivation to lead an inventor to combine those references. | 103 | REVERSED | 3/29/2019 |
371 | burr-gardiner-casey-hack | hack - the grant of a patent on a composition or machine cannot be predicated on a new use of that machine or composition. | claim const | AFFIRMED | 3/28/2019 |
372 | burr-gardiner-casey-hack | casey - The manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself. | claim const | AFFIRMED | 3/28/2019 |
373 | burr-gardiner-casey-hack | gardiner - It is trite to state that the patentability of apparatus claims must be shown in the structure claimed and not merely upon a use, function, or result thereof. | claim const | AFFIRMED | 3/28/2019 |
374 | burr-gardiner-casey-hack | burr - A machine is a concrete thing, consisting of parts, or of certain devices and combination of devices. | claim const | AFFIRMED | 3/28/2019 |
375 | artic-cat | artic cat - Evidence suggesting reasons to combine cannot be viewed in a vacuum apart from evidence suggesting reasons not to combine. | 103 | REVERSED | 3/27/2019 |
376 | baird | baird - The fact that a claimed compound may be encompassed by a disclosed generic formula does not by itself render that compound obvious. | 103 | REVERSED | 3/25/2019 |
377 | mastermine-trivascular | trivascular - In the context of an inter partes review proceeding, under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification and prosecution history. | 112(1) | AFFIRMED | 3/21/2019 |
378 | mastermine-trivascular | mastermine - distinguishing between an apparatus with functional language and a mixed apparatus and method claim | claim const | AFFIRMED | 3/21/2019 |
379 | self | self - limitations not appearing in the claims cannot be relied upon for patentability | 103 | AFFIRMED | 3/18/2019 |
380 | mcro | McRO - if judicial exception recited in each independent claim is integrated into a practical application of improving the functioning of a computer, the claimed invention is patent-eligible | 101 | REVERSED | 3/13/2019 |
381 | okajima | okajima - the level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention. | 103 | REVERSED | 3/11/2019 |
382 | vaeck-alza2 | alza2 - Whether or not a person of ordinary skill in the art would have had a reasonable expectation that a particular combination of references would work is a pure question of fact. | 103 | REVERSED | 3/8/2019 |
383 | vaeck-alza2 | vaeck - A reasonable expectation of success is a necessary part of a prima facie case of obviousness. Both the suggestion [to combine references] and the reasonable expectation of success must be founded in the prior art, not in the applicant's disclosure. | 103 | REVERSED | 3/8/2019 |
384 | perfect-web | perfect web - The mere fact that elements can be combined is not, in itself, a reason to combine them. Rather, an obviousness rejection further must explain the reasoning by which those findings support the Examiner's conclusion of obviousness. | 103 | REVERSED | 3/5/2019 |
385 | magsil | magsil - generic recitation of an algorithm [may] not [be] enabling for all types of algorithms, given the complexities associated with the differing types of algorithms | 112(1) | REVERSED | 3/4/2019 |
386 | kennametal | kennametal - cited prior art references need not recite the claim language ipsissimis verbis | prior art | AFFIRMED | 2/27/2019 |
387 | mindick | mindick - Normally, an objection is not an appealable matter, but if disposition of a rejection also disposes of an issue in an objection, may address the objection | 112(2) | REVERSED | 2/26/2019 |
388 | hybritech-shatterproof | hybritech, shatterproof - compliance with 112(b) if claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits | 112(2) | AFFIRMED | 2/22/2019 |
389 | smythe | smythe - The Examiner must consider the specific facts of the case and provide supporting reasoning. | 103 | REVERSED | 2/21/2019 |
390 | liberty-nautilus-interval | liberty, nautilus, interval - The definiteness of a term of degree is problematic if its baseline for comparison is unclear to those of ordinary skill in the art. | 112(2) | AFFIRMED | 2/20/2019 |
391 | circuit-check | Circuit check - in determining pertinent art, question not whether simple concepts ... are within the knowledge of lay people or POSITA. Rather, the question is whether inventor would look to this particular art to solve particular problem at hand | prior art | REVERSED | 2/19/2019 |
392 | vasudevan-ariad | vasudevan, ariad - the written description requirement is not met if the Specification merely describes a "desired result" | 112(1) | AFFIRMED | 2/18/2019 |
393 | trintec-therasense | therasense - to meet the strict identity test for anticipation, all elements must be disclosed in exactly the same way as they are arranged or combined in the claim. | 102 | REVERSED | 2/15/2019 |
394 | trintec-therasense | trintec - Anticipation is a test of strict identity. | 102 | REVERSED | 2/15/2019 |
395 | nuvasive | nuvasive - conclusory statement by an expert on obviousness that the modification would provide "additional information" held insufficient | 103 | REVERSED | 2/13/2019 |
396 | mills-sap | mills - The fact ref may be modified to reflect features of claimed invention does not make modification, and hence claimed invention, obvious unless prior art, knowledge of POSITA, or nature of problem to be solved suggested desirability of modification. | 101 | REVERSED | 2/12/2019 |
397 | mills-sap | sap - claimed subject matter is patent eligible where the claim limitations have "the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it." | 103 | REVERSED | 2/12/2019 |
398 | miller2 | miller2 - finding a functional relationship between a measuring receptacle and volumetric indicia thereon | 101 | REVERSED | 2/11/2019 |
399 | allied-erecting | allied erecting - A given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. | 103 | REVERSED | 2/1/2019 |
400 | texas-instruments-autogiro | texas instruments, autogiro - Courts can neither broaden nor narrow claims to give the patentee something different than what he has set forth. | claim const | REVERSED | 2/1/2019 |
401 | fritch | fritch - the "mere fact that the prior art may [ or can] be modified in the manner suggested by the Examiner does not make the modification obvious unless the prior art suggested the desirability of the modification." | 103 | REVERSED | 1/30/2019 |
402 | ancora-thales | ancora, thales - While the two steps of the Alice framework are related, the 'Supreme Court's formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the § 101 inquiry.' | 101 | REVERSED | 1/29/2019 |
403 | ultimax | ultimax - Merely claiming broadly does not render a claim insolubly ambiguous, nor does it prevent the public from understanding the scope of the patent. | 112(2) | REVERSED | 1/28/2019 |
404 | spectra-physics | Spectra-Physics - a patent need not teach, and preferably omits, what is well known in the art. | 112(1) | REVERSED | 1/25/2019 |
405 | stumbo | stumbo - denouncing claim constructions that render claimed terms superfluous | claim const | REVERSED | 1/22/2019 |
406 | himpp-zurko | zurko - general conclusions about what is 'basic knowledge' or 'common sense' are no replacement for documentary evidence for core factual findings in a determination of patentability. | 103 | REVERSED | 1/21/2019 |
407 | himpp-zurko | himpp - the facts needed to support the obviousness conclusion are not capable of instant and unquestionable demonstration as being well-known | 103 | REVERSED | 1/21/2019 |
408 | nautilus-one-e-way | One-E-Way - As long as claim terms satisfy [nautilus] test, relative terms and words of degree do not render patent claims invalid | 112(2) | REVERSED | 1/19/2019 |
409 | nautilus-one-e-way | nautilus - test for indefiniteness as "requir[ing] that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. | 112(2) | REVERSED | 1/19/2019 |
410 | longi | longi - only a reasonable expectation of success, not absolute predictability, is necessary for a conclusion of obviousness | 103 | AFFIRMED | 1/17/2019 |
411 | bristol-myers2-soni | soni - Mere improvement in properties does not always suffice to show unexpected results. | 103 | AFFIRMED | 1/16/2019 |
412 | bristol-myers2-soni | bristol-myers2 - One should consider the substantiality of the differences between the properties of the prior art and those of the invention to determine the significance of those differences. | 103 | AFFIRMED | 1/16/2019 |
413 | novozymes-capon | novozymes - to satisfy written desc must confirm predictions through individual variants or subclasses of variants expected to possess the claimed properties | 112(1) | REVERSED | 1/15/2019 |
414 | novozymes-capon | capon - It is not necessary that every permutation within a generally operable invention be effective in order for an inventor to obtain a generic claim | 112(1) | REVERSED | 1/15/2019 |
415 | plas-pak | plas-pak - a change in a reference's 'principle of operation' is unlikely to motivate a person of ordinary skill to pursue a combination with that reference | 103 | REVERSED | 1/3/2019 |
416 | dynamic-drinkware-new-railhead | dynamic drinkware, new railhead - provisional must contain written description of invention and the manner and process of making and using it, in such full, clear, concise, and exact terms, 35 USC 112 (1), to enable invention claimed in non-provisional | 112(1) | AFFIRMED | 12/28/2018 |
417 | wetterau-core-wireless | core wireless - claims directed to improved user interface bringing together 'a limited list of common functions and commonly accessed stored data' not directed to an abstract idea | 101 | REVERSED | 12/27/2018 |
418 | wetterau-core-wireless | wetterau - The test of double patenting is whether differences between inventions claimed in the instant app and in the copending ref app are such that subject matter would have been obvious to POSITA, in view of any prior art additionally relied on | OTDP | REVERSED | 12/27/2018 |
419 | bigio | We construe claim terms according to their broadest reasonable construction in light of the specification of the patent or application in which they appear. | claim const | AFFIRMED | 12/20/2018 |
420 | teva2 | claim construction is an issue of law that is left for a court or a tribunal.; [T]he ultimate issue of the proper construction of a claim should be treated as a question of law. | claim const | AFFIRMED | 12/20/2018 |
421 | kirschbraun | Kirschbraun - The familiar rule [is] that any doubt which exists should be resolved in favor of the applicant | 103 | REVERSED | 12/19/2018 |
422 | e-pass | e-pass - In the absence of a definition or express limitation, we interpret the term as broadly as reasonable and consistent with the Specification. We are mindful, though, not to import limitations from a specification unnecessarily. | claim const | AFFIRMED | 12/18/2018 |
423 | berkheimer | berkheimer - Whether a particular technology is well understood, routine, and conventional goes beyond what was simply known in the prior art. | 101 | REVERSED | 12/17/2018 |
424 | brana | brana - Usefulness in patent law, ... necessarily includes the expectation of further research and development. The stage at which an invention in this field becomes useful is well before it is ready to be administered to humans. | 101 | REVERSED | 12/13/2018 |
425 | multilayer-mannesmann | mannesmann "[t]he district court correctly observed that the phrase 'consisting of' appears in clause (a), not the preamble of the claim, and thus limits only the element set forth in clause (a)" | claim const | REVERSED | 12/13/2018 |
426 | multilayer-mannesmann | multilayer - the transitional phrase "consisting of" is closed to elements not recited. | claim const | REVERSED | 12/13/2018 |
427 | andrew-corp | andrew corp. - Terms such as "approach each other," "close to," "substantially equal," and "closely approximate" are ubiquitous in patent claims and when serving reasonably to describe claimed subject matter to POSITA, are accepted in patent examination. | 112(1) | REVERSED | 12/11/2018 |
428 | return-mail | return mail - claims that are otherwise directed to patent-ineligible subject matter cannot be saved by arguing the absence of complete preemption. | 101 | AFFIRMED | 12/10/2018 |
429 | scanner | "comprising" may allow additional elements, but that presumption may be overcome when "there is evidence of a clear intent to limit the claims." | claim const | REVERSED | 12/6/2018 |
430 | wilder | every limitation positively recited in a claim must be given effect in order to determine what subject matter that claim defines. | claim const | REVERSED | 12/6/2018 |
431 | gordon | gordon - Although a prior art device could have been turned upside down, that did not make the modification obvious unless the prior art fairly suggested the desirability of turning the device upside down. | 103 | REVERSED | 12/5/2018 |
432 | alza-angstadt | angstadt - a disclosure may nonetheless be enabling despite the need for experimentation. The test is whether such experimentation is undue. | 112(1) | REVERSED | 12/4/2018 |
433 | alza-angstadt | alza - The enablement provision in the first paragraph of 35 U.S.C. § 112 requires that the full scope of a claim be enabled. | 112(1) | REVERSED | 12/4/2018 |
434 | curtiss-wright-comark | curtiss-wright, comark - While we recognize that the doctrine of claim differentiation is not a hard and fast rule of construction, it does create a presumption that each claim in a patent has a different scope. | claim const | AFFIRMED | 12/3/2018 |
435 | credit acceptance | credit acceptance - We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are 'insufficient to pass the test of an inventive concept in the application' of an abstract idea. | 101 | AFFIRMED | 11/29/2018 |
436 | wolfensperger | wolfensperger - legitimate enquiry ... is what the drawing in fact discloses to one skilled in the art. Whatever it does disclose may be added to the specification in words without violation of the statute and rule which prohibit 'new matter.' | 112(1) | REVERSED | 11/28/2018 |
437 | giannelli, man-machine | giannelli, man machine - the relevant question before the Board was whether the apparatus described in the [prior-art] patent was "'made to," "designed to," or "configured to,"' allow the user to perform [ the recited function] | 103 | REVERSED | 11/22/2018 |
438 | magsil | magsil - The test for enablement is whether Appellants' Specification would teach one of ordinary skill in the art how to make and use the claimed invention without undue experimentation. | 112(1) | REVERSED | 11/21/2018 |
439 | gyurik | gyurik - In 103 based on close similarity in chemical structure, the necessary motivation to make a claimed compound, and thus the prima facie case of obviousness, rises from the expectation that compounds similar in structure will have similar properties. | 103 | REVERSED | 11/15/2018 |
440 | american-academy-cuozzo | american academy, cuozzo - the Patent Office has used the broadest reasonable construction standard for more than 100 years | 103 | REVERSED | 11/14/2018 |
441 | merck2-sakraida | merck2, sakraida - to distinguish claims from the prior art by introducing evidence of unexpected 'synergistic' properties, the evidence should at least demonstrate 'an effect greater than the sum of the several effects taken separately.' | 103 | REVERSED | 11/8/2018 |
442 | burr-ipxl-mastermine | burr - A machine is a concrete thing, consisting of parts, or of certain devices and combination of devices. | 101 | REVERSED | 11/7/2018 |
443 | burr-ipxl-mastermine | mastermine - a claim reciting both an apparatus and a method step is not indefinite when the "claim[] ... do[es] not claim activities performed by the user" | 112(2) | AFFIRMED | 11/7/2018 |
444 | burr-ipxl-mastermine | IPXL - a single claim reciting "both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. [§] 112, second paragraph" | 112(2) | AFFIRMED | 11/7/2018 |
445 | metalcraft | metalcraft - Without any explanation as to ... why the references would be combined to arrive at the claimed invention, we are left with only hindsight bias that KSR warns against | 103 | REVERSED | 11/6/2018 |
446 | wang2-genetic-techs | wang2, genetic techs - Whether an invention recites patent-eligible subject matter under section 101 is a pure question of law | 101 | REVERSED | 11/5/2018 |
447 | baxter-travenol-millennium | millennium - Unexpected results are shown in comparison to what was known, not what was unknown, not required to create the [claimed invention], when the product had not been created in the prior art. | 103 | REVERSED | 11/2/2018 |
448 | baxter-travenol-millennium | baxter travenol - when an obviousness rejection is based on a combination of components in the prior art reference, the comparison to show unexpected results need only be between the closest prior art reference and the claimed invention. | 112(1) | REVERSED | 11/2/2018 |
449 | amgen4-centocor | amgen4, centocor - [A]nalogizing the antibody-antigen relationship to a 'key in a lock,' it was more apt to analogize it to a lock and 'a ring with a million keys on it.' | 103 | AFFIRMED | 11/1/2018 |
450 | vogel | vogel - use of the [Specification] is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. § 103, since only the disclosure of the invention claimed in the patent may be examined. | 103 | AFFIRMED | 10/30/2018 |
451 | wellman | wellman - an inventor need not explain every detail because a patent is read by those of skill in the art. | 112(1) | REVERSED | 10/29/2018 |
452 | beckson-marine | Beckson Marine - a claimed invention may be obvious even when the prior art does not teach each claim limitation, so long as the record contains some reason that would cause one of skill in the art to modify the prior art to obtain the claimed invention. | 103 | AFFIRMED | 10/25/2018 |
453 | cree | cree - viewing an argument regarding "impermissible hindsight" as "essentially a repackaging of the argument that there was insufficient evidence of a motivation to combine the references" | 103 | AFFIRMED | 10/24/2018 |
454 | state-contracting | state contracting - well settled that prior art references need not be analogous art to anticipate | 102 | REVERSED | 10/23/2018 |
455 | bristol-myers2 | bristol-myers2 - 'differences in degree' of a known and expected property are not as persuasive in rebutting obviousness as differences in 'kind'-i.e., a new property dissimilar to a known property. | 103 | REVERSED | 10/22/2018 |
456 | dance | dance - Obviousness [cannot] be established by hindsight combination to produce the claimed invention. | 103 | REVERSED | 10/19/2018 |
457 | arendi | arendi - assertions of common sense as rationale to modify to include missing limitations must be supported by substantial evidence | 103 | REVERSED | 10/18/2018 |
458 | baker-hughes | baker hughes - the PTO cannot adopt a construction that is "beyond that which was reasonable in light of the totality of the written description" | claim const | REVERSED | 10/17/2018 |
459 | packard-nautilus-mcaward | McAward - the Office review of pending claims for indefiniteness uses "a lower threshold for ambiguity than a court's" | 112(2) | AFFIRMED | 10/16/2018 |
460 | packard-nautilus-mcaward | nautilus - does not mandate a change in the approach to indefiniteness in patent-examination matters in which the claims are interpreted under the broadest reasonable interpretation standard and an opportunity to amend the claims is afforded. | 112(2) | AFFIRMED | 10/16/2018 |
461 | packard-nautilus-mcaward | packard - a claim is indefinite when it contains words or phrases whose meaning is unclear. | 112(2) | AFFIRMED | 10/16/2018 |
462 | gemtron | gemtron - unsworn attorney argument ... is not evidence | 103 | AFFIRMED | 10/15/2018 |
463 | guinn-altoona | altoona - claims [are] withdrawn from patent protection upon filing of statutory disclaimers | 103 | REVERSED | 10/12/2018 |
464 | guinn-altoona | guinn - A statutory disclaimer under 35 U.S.C. § 253 has the effect of canceling the claims from the patent and the patent is viewed as though the disclaimed claims had never existed in the patent. | 103 | REVERSED | 10/12/2018 |
465 | mcginley | mcginley - If references taken in combination would produce a 'seemingly inoperative device,' ... such references teach away from the combination and thus cannot serve as predicates for a prima facie case of obviousness. | 103 | REVERSED | 10/11/2018 |
466 | typhoon touch, microprocessor, tsutsumi | "apparatus claims may appropriately use functional language" and such claims require "that the apparatus as provided must be 'capable' of performing the recited function, not that it might later be modified to perform that function." | claim const | REVERSED | 10/8/2018 |
467 | roberts-michlin | roberts - An inventor of a structure (machine or article of manufacture) is entitled to benefit from all of its uses, even those not described | claim const | AFFIRMED | 10/5/2018 |
468 | roberts-michlin | michlin - It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function. | claim const | AFFIRMED | 10/5/2018 |
469 | aro | aro - there is no legally recognizable or protected 'essential' element, 'gist' or 'heart' of the invention in a combination patent | 101 | REVERSED | 10/4/2018 |
470 | skvorecz | skvorecz - the transitional term 'comprising' "does not render a claim anticipated by a device that contains less ... than what is claimed." | 102 | REVERSED | 10/3/2018 |
471 | umc2 | UMC2 - There cannot be a reduction to practice of the invention ... without a physical embodiment which includes all limitations of the claim. | 112(1) | AFFIRMED | 10/2/2018 |
472 | dss | DSS - ordinary creativity and/or common sense "'cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified"' | 103 | REVERSED | 10/1/2018 |
473 | schering-levy | levy - the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. | 103 | REVERSED | 9/28/2018 |
474 | schering-levy | schering - What the skilled artisan would "recognize" or have considered "obvious" is not necessarily determinative of "inheren[cy]." | 103 | REVERSED | 9/28/2018 |
475 | wasica-verve | wasica, verve - Anticipation requires that a single reference 'describe the claimed invention with sufficient precision and detail to establish that the subject matter existed in the prior art.' | 102 | REVERSED | 9/27/2018 |
476 | amgen2 | amgen2 - The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not. | 112(1) | REVERSED | 9/25/2018 |
477 | depuy-spine | depuy spine - An inference of nonobviousness is especially strong where the prior art's teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. | 103 | REVERSED | 9/18/2018 |
478 | chapman | chapman - requiring the applicant to compare the claimed invention with the combination of references relied upon in the rejection "would be requiring comparison of the results of the invention with the results of the invention." | 103 | REVERSED | 9/14/2018 |
479 | cooper-cameron-klopfenstein-ipxl | ultimatepointer - functional language does not necessarily render an apparatus claim indefinite | claim const | REVERSED | 9/12/2018 |
480 | cooper-cameron-klopfenstein-ipxl | IPXL - A claim that recites both an apparatus and a method for subsequently using the apparatus is indefinite | claim const | REVERSED | 9/12/2018 |
481 | cooper-cameron-klopfenstein-ipxl | klopfenstein - In determining whether a reference is a "printed publication" within the meaning of § 102, "the key inquiry is whether or not a reference has been made 'publicly accessible."' | prior art | AFFIRMED | 9/12/2018 |
482 | cooper-cameron-klopfenstein-ipxl | cooper cameron - Whether [a] ... document qualifies as a 'printed publication' ... is a legal conclusion based on underlying factual determinations. | prior art | AFFIRMED | 9/12/2018 |
483 | interactive-gift-minformation | minformation - However, when logic or grammar so dictates, the functions or steps (in a claim) are required to be performed in the order recited. | claim const | REVERSED | 9/11/2018 |
484 | interactive-gift-minformation | interactive gift - As a general rule, functions or steps recited in a claim are not construed to require a particular order. | claim const | REVERSED | 9/11/2018 |
485 | verizon | verizon - a prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference. | 102 | REVERSED | 9/7/2018 |
486 | chicago | [t]he mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of the appellant's specification, to make the necessary changes in the reference device. | 103 | REVERSED | 9/6/2018 |
487 | berkheimer | berkheimer - whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination | 101 | REVERSED | 9/4/2018 |
488 | amazon | amazon - Only when a claim is properly understood can a determination be made ... whether the prior art anticipates and/or renders obvious the claimed invention. | claim const | REVERSED | 8/30/2018 |
489 | mortgage-berkheimer | berkheimer - [t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact. | 101 | REVERSED | 8/29/2018 |
490 | mortgage-berkheimer | mortgage - The patent eligibility inquiry may contain underlying issues of fact. | 101 | REVERSED | 8/29/2018 |
491 | may | may - The presumption of obviousness based on a reference disclosing structurally similar compounds may be overcome where there is evidence showing there is no reasonable expectation of similar properties in structurally similar compounds. | 103 | REVERSED | 8/28/2018 |
492 | heck-lemelson-intercontinental | intercontinental - there are some prima facie obviousness cases so strong that they are impossible to overcome even with the best possible secondary indicia of nonobviousness | 103 | AFFIRMED | 8/27/2018 |
493 | heck-lemelson-intercontinental | heck, lemelson - The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. | prior art | AFFIRMED | 8/27/2018 |
494 | packard | packard - The indefiniteness requirement is not a demand for unreasonable precision. The requirement, applied to the real world of modem technology, does not contemplate in every case a verbal precision of the kind found in mathematics. | 112(2) | REVERSED | 8/24/2018 |
495 | gal | gal - design choice precluded when claimed structure and the function it performs are different from the prior art | 103 | REVERSED | 8/23/2018 |
496 | kinetic-intelligent | intelligent - The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention. | 103 | REVERSED | 8/22/2018 |
497 | kinetic-intelligent | Kinetic - 103 requires a determination that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and would have had a reasonable expectation of success in doing so | 103 | REVERSED | 8/22/2018 |
498 | morse | morse - rejecting a claim that would have broadly conferred "a monopoly" in the use of electromagnetism, "however developed, for the purpose of printing at a distance" | 101 | REVERSED | 8/20/2018 |
499 | bozek | bozek - The test for obviousness is not whether the features of one reference may be bodily incorporated into another reference. | 103 | AFFIRMED | 8/16/2018 |
500 | pilkington | [The] patentability of a claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious. | 112(1) | REVERSED | 8/15/2018 |
501 | tf3 | TF3 - claims cannot be 'anticipated' by devices that are not the same. | 102 | REVERSED | 8/14/2018 |
502 | afg | AFG - '[C]losed' transition phrases such as 'consisting of' are understood to exclude any ... ingredients not specified in the claim. | claim const | REVERSED | 8/10/2018 |
503 | brana | brana - usefulness in patent law, and in particular in the context of pharmaceutical inventions, necessarily includes the expectation of further research and development. | 112(1) | REVERSED | 8/9/2018 |
504 | harza | harza - mere duplication of parts does not evidence patentability without a showing of a new and unexpected result | 103 | REVERSED | 8/8/2018 |
505 | andersen2-etter-aspex | andersen2 - patent drawings are not meant to be blueprints or working drawings. | claim const | AFFIRMED | 8/7/2018 |
506 | andersen2-etter-aspex | aspex - when a specification does not sufficiently address the claim language at issue, drawings may be used to aid in construction | claim const | AFFIRMED | 8/7/2018 |
507 | rapid-litigation-mayo | rapid litigation, mayo - Patent-eligibility does not tum on ease of execution or obviousness of application. Those are questions that are examined under separate provisions of the Patent Act. | 101 | AFFIRMED | 8/6/2018 |
508 | berkheimer | berkheimer - The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional | 101 | REVERSED | 8/2/2018 |
509 | multilayer | multilayer - When the phrase "consisting of' appears in a clause of the body of a claim, there is an "exceptionally strong presumption that a claim term set off with 'consisting of' is closed to unrecited elements." | claim const | AFFIRMED | 8/1/2018 |
510 | sonix | sonix - The specification may support claimed terminology for purposes of 35 U.S.C. § 112, second paragraph by providing examples of what is meant by the claimed term. | 112(2) | REVERSED | 7/31/2018 |
511 | amgen3-symbol-tech | symbol tech. - Consonance requires that line of demarcation between 'independent and distinct inventions' that prompted restriction requirement be maintained. Where that line is crossed the prohibition of the third sentence of Section 121 does not apply. | 101 | REVERSED | 7/30/2018 |
512 | amgen3-symbol-tech | amgen3 - Intervening continuation applications do not render a patent ineligible for § 121 protection so long as they descended from a divisional application filed as a result of a restriction requirement | 101 | REVERSED | 7/30/2018 |
513 | hanlon | [A] mere change in shape or form is not patentable unless the changed element performs a new function | 103 | AFFIRMED | 7/27/2018 |
514 | johnston1 | Attorneys' argument is no substitute for evidence. | 103 | AFFIRMED | 7/27/2018 |
515 | hutchison-man-machine-giannelli-aspex | aspex - "adapted to" required elements to be "designed or configured to accomplish the specified objective, not simply that they can be made to serve that purpose" | 112(2) | REVERSED | 7/26/2018 |
516 | hutchison-man-machine-giannelli-aspex | giannelli - the phrase "adapted to," in view of the specification, has a narrower meaning than "capable of' or "suited for." | 112(2) | REVERSED | 7/26/2018 |
517 | hutchison-man-machine-giannelli-aspex | man machine - the phrase 'adapted to' generally means 'made to,' 'designed to,' or 'configured to,' though it can also be used more broadly to mean 'capable of or 'suitable for' | 112(2) | REVERSED | 7/26/2018 |
518 | hutchison-man-machine-giannelli-aspex | hutchison - the recitation that an element is 'adapted to' perform a function is not a positive limitation but only requires the ability to so perform" and "does not constitute a limitation in any patentable sense. (overturned) | 112(2) | REVERSED | 7/26/2018 |
519 | mcro-morse | McRO - We therefore look to whether the claims ... focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. | 101 | AFFIRMED | 7/25/2018 |
520 | mcro-morse | morse - The abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished.' | 101 | AFFIRMED | 7/25/2018 |
521 | howard | howard - Molding a foam plastic part so as to form a skin layer having desired properties different from those of the foam body beneath is both more complicated, and less predictable, than casting a metal grate as a unitary body. | 103 | REVERSED | 7/24/2018 |
522 | accentra | accentra - the term "about" is not indefinite if it can be understood in the context of the technology | 112(2) | REVERSED | 7/20/2018 |
523 | bigio-clay | clay - a reference is reasonably pertinent if, ... it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem. | prior art | REVERSED | 7/19/2018 |
524 | bigio-clay | bigio - test for analogous art requires PTO to determine appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed invention. | prior art | REVERSED | 7/19/2018 |
525 | fisher2 | fisher2 - In cases involving predictable factors, such as mechanical or electrical elements, a single embodiment provides broad enablement, other embodiment's performance characteristics can be predicted by resort to known scientific laws. | 112(1) | REVERSED | 7/18/2018 |
526 | bosies, winship | preponderance of the evidence standard "only requires the fact finder 'to believe that the existence of a fact is more probable than its nonexistence"' | 103 | REVERSED | 7/17/2018 |
527 | caveney | Examiner's burden of proving unpatentability when rejecting claims in a patent application is by a preponderance of the evidence | 103 | REVERSED | 7/17/2018 |
528 | two-way-media | two-way media - no error in citing to the preamble in review of whether the claims are directed to an abstract idea. | 101 | AFFIRMED | 7/16/2018 |
529 | bristol-myers2 | bristol-myers2 - evidence of unexpected results must establish that there is a difference between the results obtained and those of the closest prior art, and that the difference would not have been expected by POSITA at the time of the invention. | 103 | AFFIRMED | 7/13/2018 |
530 | chupp | chupp - evidence that a compound is unexpectedly superior in one of a spectrum of common properties, as here, can be enough to rebut a prima facie case of obviousness. | 103 | REVERSED | 7/12/2018 |
531 | ksr-unigene | unigene - obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. | 103 | REVERSED | 7/11/2018 |
532 | ksr-unigene | KSR - Obviousness[, however,] requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. | 103 | REVERSED | 7/11/2018 |
533 | hall-kyocera | kyocera - for 'public accessibility' the reference must have been made available to the extent that a person interested and ordinarily skilled in the subject matter exercising reasonable diligence could locate it. | prior art | REVERSED | 7/10/2018 |
534 | hall-kyocera | hall - 'public accessibility' has been called the touchstone in determining whether a reference constitutes a 'printed publication' bar under 35 U.S.C. § 102(b ) | prior art | REVERSED | 7/10/2018 |
535 | applied-materials-yates | yates - However, "the prior art need not provide the exact method of optimization for the variable to be result-effective. A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective." | 103 | AFFIRMED | 6/29/2018 |
536 | applied-materials-yates | applied materials - A variable has been held not a result-effective variable where there was no teaching of the relationship claimed and "no evidence of this relationship in the prior art." | 103 | AFFIRMED | 6/29/2018 |
537 | napier-cruciferous-scaltech | scaltech - Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. | 102 | REVERSED | 6/27/2018 |
538 | napier-cruciferous-scaltech | napier - Inherency is a question of fact that arises both in the context of anticipation and obviousness rejections. | 102 | REVERSED | 6/27/2018 |
539 | napier-cruciferous-scaltech | cruciferous - Inherency can only be established when "prior art necessarily functions in accordance with, or includes, the claimed limitations." | 103 | REVERSED | 6/27/2018 |
540 | nuvasive-lee-active-video | active video - in 103 the testimony can't be generic bearing no relation to any specific combination of prior art elements | 103 | REVERSED | 6/25/2018 |
541 | nuvasive-lee-active-video | nuvasive, lee - for 103 'conclusory statements' alone are insufficient and, instead, the finding must be supported by a 'reasoned explanation' | 103 | REVERSED | 6/25/2018 |
542 | nike | nike - A claimed invention may be obvious even when the prior art does not teach each claim limitation, so long as the record contains some reason why one of skill in the art would modify the prior art to obtain the claimed invention. | 103 | REVERSED | 6/22/2018 |
543 | fujikawa | fujikawa - [I]psis verbis disclosure is not necessary to satisfy the written description requirement of Section 112. | 112(1) | REVERSED | 6/21/2018 |
544 | randall mfg | In recognizing the role of common knowledge and common sense, we have emphasized the importance of a factual foundation to support a party's claim about what one of ordinary skill in the relevant art would have known. | 103 | REVERSED | 6/20/2018 |
545 | wang | wang - The issue of whether the written description requirement has been satisfied is a question of fact | 112(1) | REVERSED | 6/15/2018 |
546 | sandisk2 | sandisk2 - general rule that the use of the indefinite articles 'a' or 'an' means 'one or more' | claim const | AFFIRMED | 6/14/2018 |
547 | anderson | anderson - It is always possible to put something into a combination to render it inoperative. It is not the function of the claims to exclude all such matters but to point out what the combination is. | 112(1) | REVERSED | 6/12/2018 |
548 | homeland-renishaw | homeland, renishaw - The claim-construction inquiry ... begins and ends in all cases with the actual words of the claim. | claim const | AFFIRMED | 6/7/2018 |
549 | baxter-intern2-beattie-hyon | baxter intern.2, beattie, hyon - Obviousness is a question of law based on underlying factual findings, including what a reference teaches, and the existence of a reason to combine references. | 103 | AFFIRMED | 6/5/2018 |
550 | patel-brandt | patel, brandt - prima facie 103 rejections may be appropriate "where there is a teaching in the prior art that the end points of the prior art range are approximate, or can be flexibly applied." | 103 | REVERSED | 6/4/2018 |
551 | dann | dann - The mere existence of differences between the prior art and the claim does not establish non-obviousness. | 103 | AFFIRMED | 5/30/2018 |
552 | dss-arendi | DSS, arendi - ordinary creativity and/or common sense "cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified." | 103 | REVERSED | 5/29/2018 |
553 | berkheimer_25 | berkheimer - The question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact. | 101 | AFFIRMED | 5/25/2018 |
554 | bager | bager - Description for the purposes of anticipation can be by drawings alone as well as by words. | 102 | AFFIRMED | 5/25/2018 |
555 | carnegie | carnegie - The mere possession of an apparatus does not teach or suggest all the possible processes to which it may be adapted. | 102 | REVERSED | 5/23/2018 |
556 | verve | verve - Expressions such as substantially are sometimes warranted upon consideration of the claimed invention in light of the disclosure, in order to accommodate minor variations that may be appropriate to secure the invention. | claim const | REVERSED | 5/21/2018 |
557 | dow-chemical-stratoflex | stratoflex - The evidence must establish that others skilled in the art tried and failed to find a solution for the problem(s) solved by the Appellants to show a failure of others. | 103 | AFFIRMED | 5/18/2018 |
558 | dow-chemical-stratoflex | dow chemical - Failure of others to satisfy a long-felt need can provide evidence of non-obviousness. | 103 | AFFIRMED | 5/18/2018 |
559 | berkheimer | berkheimer - "[t]he mere fact that something is disclosed in a piece of prior art [] does not mean it was well-understood, routine and conventional" | 101 | REVERSED | 5/8/2018 |
560 | polaroid-peters | polaroid, peters - That which infringes if later anticipates if earlier. | 103 | AFFIRMED | 5/4/2018 |
561 | abbvie-graf | graf - Obviousness is not to be determined on the basis of purpose alone. | 103 | AFFIRMED | 5/2/2018 |
562 | abbvie-graf | abbvie - One needs to show that one has truly invented the genus, i.e., that one has conceived and described sufficient representative species encompassing the breadth of the genus. | 112(1) | AFFIRMED | 5/2/2018 |
563 | dmi-deere2 | DMI, deere2 - Where some claims are broad and others narrow, the narrow claim limitations cannot be read into the broad. | claim const | REVERSED | 4/30/2018 |
564 | kloster | kloster - Absence from the reference of any claimed element negates anticipation. | 102 | REVERSED | 4/27/2018 |
565 | kotzab-ecolochem | ecolochem - Rather particular findings must be made as to the reason the skilled artisan, with no knowledge of the claimed invention, would have selected these components for combination in the manner claimed. | 103 | REVERSED | 4/26/2018 |
566 | kotzab-ecolochem | kotzab - Identification in the prior art of each individual part claimed is insufficient to defeat patentability of the whole claimed invention | 103 | REVERSED | 4/26/2018 |
567 | mattison | mattison - Claims are not indefinite simply because they do not describe the invention using numerical values. | 112(2) | REVERSED | 4/25/2018 |
568 | chu-cutsforth | cutsforth - stating that a particular placement of an element is a design choice does not make it obvious. | 103 | REVERSED | 4/24/2018 |
569 | chu, cutsforth | evidence that the claimed structure and function it performed differed from the prior art precluded a finding that catalyst placement was merely a design choice | 103 | REVERSED | 4/24/2018 |
570 | scaltech | Inherency may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. | 103 | REVERSED | 4/23/2018 |
571 | cfmt, ksr | A prima facie case for obviousness "requires a suggestion of all limitations in a claim," and "a reason that would have prompted a POSITA to combine the elements in the way the claimed new invention does," | 103 | REVERSED | 4/20/2018 |
572 | ferguson | It is the use of the words in the context of the written description and customarily by those skilled in the relevant art that accurately reflects both the 'ordinary' and the 'customary' meaning of the terms in the claims. | 112(1) | REVERSED | 4/19/2018 |
573 | pilkington, thorpe | If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. | claim const | REVERSED | 4/18/2018 |
574 | capon | Precedent illustrates that the determination of what is needed to support generic claims to biological subject matter depends on a variety of factors, such as the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, the predictability of the aspect at issue, and other considerations appropriate to the subject matter. | 112(1) | REVERSED | 4/17/2018 |
575 | sas | the ordinary meaning of a claim term at the time of the invention controls. | claim const | REVERSED | 4/16/2018 |
576 | ultimax | Merely claiming broadly does not render a claim indefinite. | claim const | REVERSED | 4/12/2018 |
577 | lampi | Transitional phrases such as ... 'having' ... must be interpreted in light of the specification to determine whether open or closed language is intended. … | claim const | REVERSED | 4/11/2018 |
578 | turlay | disclosures in a reference relied on to prove anticipation must be so clear and explicit that those skilled in the art will have no difficulty in ascertaining their meaning | 102 | REVERSED | 4/9/2018 |
579 | sensonics, interconnect | The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made. | 103 | REVERSED | 4/3/2018 |
580 | rapoport | In determining the meaning of the claims, we turn first to the claim itself. | 102 | REVERSED | 3/30/2018 |
581 | borkowski2 | "[i]f a description or the enabling disclosure of a specification is not commensurate in scope with the subject matter encompassed by a claim," then "that fact alone" does not render the claim indefinite. | 112(1) | REVERSED | 3/29/2018 |
582 | chicago | mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness | 103 | REVERSED | 3/28/2018 |
583 | perfect surgical | An attorney's work in preparing a patent application is evidence of an inventor's diligence. | 102 | AFFIRMED | 3/27/2018 |
584 | dunn | The cause and effect sought to be proven is lost here in the welter of unfixed variables. | 103 | AFFIRMED | 3/27/2018 |
585 | freeman | for unexpected results (1) there is a difference between the results obtained through the claimed invention and the prior art and (2) results obtained would not have been expected by one of ordinary skill in the art at the time of the invention | 103 | AFFIRMED | 3/27/2018 |
586 | smith3 | a broad claim construction was erroneous where "[t]here [was] no dispute that the ... specification consistently describe[d] and refer[red] to the body as a component distinct from others, such as the mandrel, piston, and drive ring." | claim const | REVERSED | 3/23/2018 |
587 | ormco | a reference that ??teaches away?? from a given combination may negate a motivation to modify the prior art to meet the claimed invention. | 103 | REVERSED | 3/22/2018 |
588 | B.G.Corp, KSR | the selection of that group which proves serviceable to a given need may require a high degree of originality. It is that act of selection which is the invention | 103 | REVERSED | 3/19/2018 |
589 | chester | Section 132 “is violated when the rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” | 101 | REVERSED | 3/14/2018 |
590 | bowen | In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved. | 112(1) | AFFIRMED | 3/12/2018 |
591 | energizer holdings | ??[T]he failure to provide explicit antecedent basis for terms does not always render a claim indefinite?? if ??the scope of a claim would be reasonably ascertainable by those skilled in the art.?? | 112(2) | REVERSED | 3/9/2018 |
592 | intelligent | The reasonable expectation of success requirement refers to the likelihood of success in combining references to meet the limitations of the claimed invention. | 103 | REVERSED | 3/8/2018 |
593 | Kinetic | 103 req skilled artisan motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so. | 103 | REVERSED | 3/8/2018 |
594 | par pharmaceutical | The presence or absence of a motivation to combine references in an obviousness determination is a question of fact. | 103 | REVERSED | 3/8/2018 |
595 | borkowski2 | ??[T]here is no magical relation between the number of representative examples and the breadth of the claims; the number and variety of examples are irrelevant if the disclosure is ??enabling.???? | 112(1) | REVERSED | 3/7/2018 |
596 | berkheimer | when no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, conventional to a skilled artisan in the relevant field, 101 can be decided on summary judgment as a matter of law. | 101 | AFFIRMED | 3/6/2018 |
597 | mortgage | Although the ultimate determination of eligibility is a question of law ??[t]he patent eligibility inquiry may contain underlying issues of fact.?? | 101 | AFFIRMED | 3/6/2018 |
598 | bosies | the preponderance of the evidence standard requires the finder of fact to believe that the existence of a fact is more probable than its nonexistence | 102 | REVERSED | 3/1/2018 |
599 | caveney | An Examiner??s factual finding regarding what a reference discloses must be supported by a preponderance of the evidence. | 102 | REVERSED | 3/1/2018 |
600 | cooper | there is no invention in the discovery of a general formula if it covers a composition described in the prior art. | claim const | AFFIRMED | 2/26/2018 |
601 | mochel | the phrase ??up to?? includes zero as the lower limit | claim const | AFFIRMED | 2/26/2018 |
602 | transocean, ksr | not enough to simply show that the refs disclose the claim limitations; in addition,??it can be important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements as the new invention does | 103 | REVERSED | 2/23/2018 |
603 | american academy | During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. | claim const | REVERSED | 2/23/2018 |
604 | smith3 | The correct inquiry ??is [BRI] an interpretation that corresponds with what and how the inventor describes his invention in the specification.?? | claim const | REVERSED | 2/23/2018 |
605 | de lajarte | Appellant bears the burden of: (1) showing the basic and novel characteristics of their claimed invention, and (2) establishing how those characteristics would be materially changed by any allegedly excluded component of an applied reference. | claim const | AFFIRMED | 2/22/2018 |
606 | PPG | The claim term ??consisting essentially of?? is used to indicate that ??the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not materially affect the basic and novel properties of the invention.?? | claim const | AFFIRMED | 2/22/2018 |
607 | Stepan | (holding that if the claimed range is not within or does not overlap the prior art range, it is the PTO??s burden to show that the claimed range would have been obvious to a person of ordinary skill in the art). | 103 | REVERSED | 2/21/2018 |
608 | kaslow | The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to artisan that inventor had possession at that time of later claimed subject matter | 112(1) | REVERSED | 2/21/2018 |
609 | lizardtech | In order to comply with the written description requirement, the Spec must describe the invention sufficiently to convey to a person of skill in the art that the patentee had possession of the claimed invention at the time of the application | 112(1) | REVERSED | 2/21/2018 |
610 | Circuit check | Prior art is analogous if an inventor would look to this particular art to solve the particular problem at hand. | prior art | REVERSED | 2/21/2018 |
611 | ansonia | [N]othing is better settled in this court than that the application of an old process to a new and analogous purpose does not involve invention, even if the new result had not before been contemplated. | 103 | AFFIRMED | 2/14/2018 |
612 | superguide | a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. | claim const | AFFIRMED | 2/14/2018 |
613 | crocs | Prior art taught away by specifically discouraging use of foam straps | 2/13/2018 | ||
614 | WMS, alappat | Programming creates ??a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.?? | 103 | REVERSED | 2/12/2018 |
615 | trading tech.2 | [precedent] has recognized that specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent-eligible subject matter. | 101 | REVERSED | 2/9/2018 |
616 | papesch | From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing | 103 | AFFIRMED | 2/8/2018 |
617 | rijckaert | under the principles of inherency, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. | 103 | REVERSED | 2/8/2018 |
618 | trintec, robertson | Inherency does not require that the missing descriptive material be present ??more likely than not,?? but rather that it ??is ??necessarily present.???? | 103 | REVERSED | 2/8/2018 |
619 | whitserve | for 103 a prior art reference need not use identical language as the claim (i.e., an ipsissimis verbis or in haec verbis test is not required) | 103 | AFFIRMED | 2/1/2018 |
620 | Lilienfeld | while a change in the proportions of a combination shown to be old may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree. | 103 | REVERSED | 1/30/2018 |
621 | distefano | A limitation is printed matter only if it claims the content of information. | claim const | AFFIRMED | 1/29/2018 |
622 | deering, special equipment | it is not necessary to recite in the claim everything necessary to operate the device. | 112(2) | REVERSED | 1/26/2018 |
623 | ruff | equivalence cannot be demonstrated by mere existence within a Markush group | 103 | REVERSED | 1/25/2018 |
624 | aspex | where claim language ??adapted to?? is to be construed consistent with ??configured to?? it requires that the structure must be ??designed or configured to accomplish the specified objective, not simply that. . . [it] can be made to serve that purpose.?? | claim const | REVERSED | 1/25/2018 |
625 | howmedica | declining to impute a limitation into a disputed claim term in the absence of a clear requirement in the specification, even where ??every disclosure of [the disputed term] in the specification shows [the alleged limitation]?? | claim const | REVERSED | 1/24/2018 |
626 | Phillips | [W]e have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment.?? | claim const | REVERSED | 1/24/2018 |
627 | ventana | [T]he mere fact that the [asserted] patent discloses [only certain] embodiments . . . does not in and of itself mean that the method claims at issue are limited to the disclosed embodiments.?? | claim const | REVERSED | 1/24/2018 |
628 | smith3 | BRI not whether spec proscribes or precludes some broad reading of claim term adopted by examiner, not interpretation that is not inconsistent with spec, but an interpretation that corresponds with what and how inventor describes invention in spec | claim const | REVERSED | 1/19/2018 |
629 | smith2 | claims directed to rules for conducting a wagering game compare to other fundamental economic practices found abstract by the Supreme Court. | 101 | AFFIRMED | 1/18/2018 |
630 | nielson | dependent claims, not argued separately, fall with the independent claims, even though the dependent claims were rejected based on additional (or different) references. | 112(1) | AFFIRMED | 1/18/2018 |
631 | McAward | The Office establishes a prima facie case of indefiniteness with a rejection explaining how the metes and bounds of a pending claim are not clear because the claim contains words or phrases whose meaning is unclear. | 112(2) | AFFIRMED | 1/18/2018 |
632 | jacoby | persons skilled in the art ??must be presumed to know something?? about the art ??apart from what the references disclose?? | 103 | AFFIRMED | 1/17/2018 |
633 | giannelli | Physical capability alone does not render obvious that which is contraindicated. | 103 | REVERSED | 1/17/2018 |
634 | spada | when the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art. | 103 | AFFIRMED | 1/16/2018 |
635 | cutsforth | stating that a particular placement of an element is a design choice does not make it obvious; a reason must be offered as to why a skilled artisan would have made the specific design choice https://t.co/Mx0ZRNqcDD | 103 | REVERSED | 1/15/2018 |
636 | cutsforth | a particular placement of an element is a design choice does not make it obvious; a reason must be offered as to why a skilled artisan would have made the specific design choice | 103 | REVERSED | 1/15/2018 |
637 | digitech, return mail | for 101 little difference between the abstract nature of ??supply chain logistics?? and ??organizing information through mathematical correlations?? | 101 | AFFIRMED | 1/12/2018 |
638 | applied materials | Whether the standard deviation of height was known to be a result-effective variable is a question of fact. | 103 | REVERSED | 1/12/2018 |
639 | epstein | Questions of fact are resolved in patent examination by the preponderance of the evidence of record. | 103 | REVERSED | 1/12/2018 |
640 | bernhart | If a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. | 112(2) | REVERSED | 1/12/2018 |
641 | noll | a programmed machine is structurally different from a machine without that program. | 112(6) | REVERSED | 1/12/2018 |
642 | hiniker | Unclaimed features cannot impart patentability to claims. | claim const | AFFIRMED | 1/12/2018 |
643 | self | Arguments must be commensurate in scope with the actual claim language. | claim const | AFFIRMED | 1/12/2018 |
644 | gulack | The relevant question is whether ??there exists any new and unobvious functional relationship between the printed matter and the substrate.?? | claim const | AFFIRMED | 1/11/2018 |
645 | king | Mental perceptions of what data represent are non-functional and given no weight. | claim const | AFFIRMED | 1/11/2018 |
646 | mackay | a scientific truth, or the mathematical expression of it, is not a patentable invention. | 101 | AFFIRMED | 1/10/2018 |
647 | winner int'l | An ordinary artisan would not be motivated to make a modification which adds disadvantages without countervailing advantages | 103 | REVERSED | 1/10/2018 |
648 | crystal | The transitional term “comprising” “creates a presumption that the recited elements are only a part of the device, [and] that the claim does not exclude additional, unrecited elements.” | claim const | REVERSED | 1/10/2018 |
649 | PPG | A “consisting essentially of’ claim occupies a middle ground between closed claims that are written in a “consisting of’ format and fully open claims that are drafted in a “comprising” format. | claim const | REVERSED | 1/10/2018 |
650 | engel2 | separate claim terms should be construed as reciting separate structures | claim const | REVERSED | 1/9/2018 |
651 | outdry | Any motivation, “whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient.” | 103 | AFFIRMED | 1/8/2018 |
652 | transclean | “[A]nticipation by inherent disclosure is appropriate only when the reference discloses prior art that must necessarily include the unstated limitation . . ." | 102 | REVERSED | 1/5/2018 |
653 | cree | hindsight argument is of no moment where the Examiner provides a sufficient, non-hindsight reason to combine the references | 103 | AFFIRMED | 1/5/2018 |
654 | aspex | distinction between devices that are merely “capable of’ and those that are “configured to,” with the latter requiring a narrower construction. | claim const | REVERSED | 12/28/2017 |
655 | boston scientific2 | construing “adapted to,” in light of patent as a whole, to mean “configured to,” not merely “capable of’ | claim const | REVERSED | 12/28/2017 |
656 | stepan2 | Appellants do not have the burden of presenting evidence of criticality [of a range] because a prima facie case of obviousness was not yet established. | 103 | 12/15/2017 | |
657 | orthokinetics, schreiber | Where unclaimed subject matter has limits reasonably ascertainable by those skilled in the art, the claim may be quite broad, but not necessarily indefinite. | 112(2) | 12/15/2017 | |
658 | geneva | where a functional interaction with some broad class of unclaimed subject matter is used to define the scope of the subject matter actually claimed, the scope of the claim becomes highly dependent upon the unclaimed thing | claim interpretation | 12/15/2017 | |
659 | chaganti | It is not enough to say that... to do so would 'have been obvious to one of ordinary skill.'. . . Such circular reasoning is not sufficient, more is needed to sustain an obviousness rejection. | 103 | 12/13/2017 | |
660 | samiran | the meaning of the word 'comprising' cannot be construed to extend so far as to eliminate the expressed limitations which the appellant has placed within his claims | claim interpretation | 12/12/2017 | |
661 | plantronics | for obviousness the req. for a reason to combine the reference acts as a check on the potential for the improper use of hindsight | 103 | 12/7/2017 | |
662 | fairwarningIP, bancorp | the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter. | 101 | 12/6/2017 | |
663 | Hartness | holding dependent claim to be a fortiori non-obvious where independent claim was non-obvious | 103 | 12/5/2017 | |
664 | McRO | for 101, do the claims as a whole 'focus on a specific means or method that improves the relevant technology' or are they 'directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery.' | 101 | 12/1/2017 | |
665 | wiggins | The Examiner's rejection is pursuant to 35 U.S.C. 102(b), and evidence of secondary considerations, such as unexpected results, is not relevant to a rejection under 102(b). | 102 | 11/30/2017 | |
666 | cortright | Prior art references may be indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art. | claim interpretation | 11/30/2017 | |
667 | eli lilly4 | for anticipation, the dispositive question is 'whether one skilled in the art would reasonably understand or infer from a prior art reference that every claim element is disclosed in that reference.' | 102 | 11/29/2017 | |
668 | merck3 | A claim construction that gives meaning to all the terms of the claim is preferred over one that does not do so. | claim interpretation | 11/28/2017 | |
669 | morse | The abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished.' | 101 | 11/23/2017 | |
670 | enfish | too broad when claims described at such a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to 101 swallow the rule | 101 | 11/22/2017 | |
671 | best | In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. | claim interpretation | 11/21/2017 | |
672 | arendi | references to 'common sense' . . . cannot be used as a wholesale substitute for reasoned analysis and evidentiary support. | 103 | 11/17/2017 | |
673 | ppc | Components that are shaped or configured to fit one another 'are sized and dimensioned to abut one another' | claim interpretation | 11/16/2017 | |
674 | depuy spine, KSR | predictable result' discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. | 103 | 11/15/2017 | |
675 | ariosa, alice | the principle of preemption is the basis for the judicial exceptions to patentability | 101 | 11/13/2017 | |
676 | natron | A dependent claim is a claim to the invention of the parent claim with the added feature: it is not a claim to the added feature alone. | claim interpretation | 11/8/2017 | |
677 | ethicon2 | normal artisans desire to improve on what is already known can provide motivation to optimize variables | 103 | 11/2/2017 | |
678 | crocs, GPAC | prima facie case of nexus when patentee shows both commercial success and product is invention claimed | 103 | 11/1/2017 | |
679 | kao | if secondary consideration results from something other than what is both claimed and novel in claim, no nexus | 103 | 11/1/2017 | |
680 | wesslau, bausch & lomb | in 103 impermissible to pick and choose, at exclusion of what ref wld suggest to POSITA | 103 | 10/30/2017 | |
681 | Morris, suitco surface, smith3 | BRI is an interpretation that corresponds w/ what and how inventor desc inv in spec | claim interpretation | 10/27/2017 | |
682 | fritch | mere fact prior art may be modified does not make it obvious unless suggested desirability of modification. | 103 | 10/23/2017 | |
683 | kotzab | when 103 based on single prior art ref, there must be showing of suggestion or motivation to modify it | 103 | 10/23/2017 | |
684 | SIBIA, ormco | claim can be obvious even if all claimed features not in prior art if suggestion or motivation found | 103 | 10/23/2017 | |
685 | verdegaal, wasica, verve | for 102 single ref. must describe inv w/ suff precision to establish existed in prior art | 102 | 10/19/2017 | |
686 | enfish | software can make non abstract improvements to computer technology just as hardware improvements can | 101 | 10/18/2017 | |
687 | textron, K-2 | to the extent that functional limitations imply structure, they cannot be ignored | claim interpretation | 10/17/2017 | |
688 | Beachcombers | claim const. resulting in dep. claim having same scope as indep. claim 'presumptively unreasonable.' | claim interpretation | 10/16/2017 | |
689 | miller | breadth of a claim should not be equated with indefiniteness | 112(2) | 10/13/2017 | |
690 | vas-cath, lukach | subtle distinction between written description under 112 and written description under 102(b) | 112(1) | 10/11/2017 | |
691 | odetics, chiuminatta | Structural equivalence under 112(6) is met only if the differences are insubstantial | 112(6) | 9/29/2017 | |
692 | ochiai | that which was unknown could not have been obvious | 103 | 9/28/2017 | |
693 | schering | That which is inherent is not necessarily known | 103 | 9/28/2017 | |
694 | Morris | It is well settled that 'integral' may be construed to cover more than 'one-piece' construction. | claim interpretation | 9/27/2017 | |
695 | chupp | objective evidence of patentability submission doesn't mandate conclusion of patentability in and of itself | 103 | 9/25/2017 | |
696 | daniels | PTO need not accept statement in declaration when there is objective evidence in record for questioning it | 103 | 9/25/2017 | |
697 | lindell | some weight ought to be given to persuasively supported statement of POSITA on what was not obvious to him | 103 | 9/25/2017 | |
698 | altoona | each claim must stand or fall, as itself sufficiently defining invention, independently of the others | claim interpretation | 9/21/2017 | |
699 | jones | each claim must be considered as defining a separate invention | claim interpretation | 9/21/2017 | |
700 | pall corp. | each claim is a separate statement of the patented invention | claim interpretation | 9/21/2017 | |
701 | ashland oil | there must be a nexus between the merits of the claimed invention and the submitted evidence | 103 | 9/20/2017 | |
702 | sernaker | Objective evidence of non-obviousness submitted by a patent applicant must be considered. | 103 | 9/20/2017 | |
703 | invitrogen, pearson | unsubstantiated attorney argument is no substitute for competent evidence | 103 | 9/19/2017 | |
704 | barker, winkhaus | That POSITA might realize from disclosure step is possible not suff indication part of invention | 112(1) | 9/18/2017 | |
705 | tronzo, lockwood | disclosure that merely renders later-claimed subj matter obvious not suff to meet writ desc req | 112(1) | 9/18/2017 | |
706 | robertson | mere fact certain thing may result from given set of circumstances not sufficient to establish inherency | 103 | 9/15/2017 | |
707 | tokai | for 103 if [secondary considerations are] due to an element in the prior art, no nexus exists. | 103 | 9/13/2017 | |
708 | OIP | that claims don't preempt all forms of abstraction or limit abstract idea to e-commerce: not any less abstract | 101 | 9/11/2017 | |
709 | borkowski | original and supp aff's together with accomp comments must adequately explain facts/data relied upon | 103 | 9/8/2017 | |
710 | lindner | Mere conclusory statements in spec + aff's are entitled little weight if USPTO questions their efficacy | 103 | 9/8/2017 | |
711 | agrizap | [t]he asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch | 103 | 9/7/2017 | |
712 | donaldson | BRI that an examiner may give means-plus-function language is that statutorily mandated in paragraph six | 112(6) | 9/7/2017 | |
713 | odetics | Equivalence under 112(6) requires '[f]unctional identity and either structural identity or equivalence.' | 112(6) | 9/7/2017 | |
714 | elektra | Claims are interpreted with an eye toward giving effect to all terms in the claim. | claim interpretation | 9/6/2017 | |
715 | Anheuser-Busch | relevant inquiry for writ descrip - whether claim not limited to a [cert. embodiment] is described | 112(1) | 9/4/2017 | |
716 | alza2 | Whether or not POSITA wld've had reas. expectation particular comb. of refs wld work a pure question of fact | 103 | 9/1/2017 | |
717 | titanium | 102 only when ref discloses claim exactly, where there are differences, rejection must be based on 103 | 103 | 8/31/2017 | |
718 | McRO | do claims focus on specific means or method that improves relevant tech or on a result that is abstract idea | 101 | 8/30/2017 | |
719 | metalcraft | can't allow hindsight bias to be thread that stitches together prior art patches into claimed invention | 103 | 8/29/2017 | |
720 | eli lilly3, yates | for 103, inappropriate to 'squeez[e] new factual situations into preestablished pigeonholes.' | 103 | 8/28/2017 | |
721 | genetic techs | 101 detecting nucleic acids in a sample can involve s/thing more than implementation of nat. phenom | 101 | 8/24/2017 | |
722 | brink | ambiguous ref can be interpreted so that it may or may not constitute an anticipation, rejection improper | 102 | 8/23/2017 | |
723 | richardson | for 102 every element of the claimed invention must be literally present, arranged as in the claim. | 102 | 8/23/2017 | |
724 | eli lilly4 | for 102 wld POSITA reas understand or infer from a prior art ref that every claim element is disclosed | 102 | 8/22/2017 | |
725 | enfish, internet patents | directed to inquiry: 'their character as a whole is directed to excluded subject matter.' | 101 | 8/18/2017 | |
726 | recognicorp | process started with data, added algorithm, ended with new form of data directed to an abstract idea. | 101 | 8/18/2017 | |
727 | grasselli2 | unexpected results must be commensurate in scope with the claims | 103 | 8/17/2017 | |
728 | meadwestvaco | considering objective evidence of non-obviousness treat broader claims different than narrower claims | 103 | 8/17/2017 | |
729 | mason | whereby clause can be functional language not defining any structure and not distinguishing over prior art | claim interpretation | 8/17/2017 | |
730 | seid | Ornamental effects cannot be relied upon as a patentable difference. | 103 | 8/15/2017 | |
731 | himpp, zurko | general conclusions a/b 'basic knowledge' or 'common sense' not acceptable to determine patentability | 103 | 8/11/2017 | |
732 | bayer4, o'farrell, ksr | not obvious to try where vague prior art does not guide inventor toward particular solution | 103 | 8/10/2017 | |
733 | KSR, kahn, nuvasive | need articulated reasoning with some rational underpinning for legal conclusion of obviousness | 103 | 8/9/2017 | |
734 | lahoui, cutsforth | a reason must be offered as to why a skilled artisan would have made the specific design choice | 103 | 8/8/2017 | |
735 | buszard | It is not a reasonable claim interpretation to equate 'flexible' with 'rigid' | claim interpretation | 8/7/2017 | |
736 | kalm | Anticipation is the epitome of obviousness | 103 | 8/4/2017 | |
737 | leo, wright, iron grip, nike | for 103 age of the refs not persuasive absent tried and failed evidence | 103 | 8/2/2017 | |
738 | Phillips, merrill | Claims are of primary importance, in effort to ascertain precisely what it is that is patented | claim interpretation | 8/1/2017 | |
739 | vitronics, phillips | [T]he context in which a term is used in the asserted claim can be highly instructive. | claim interpretation | 8/1/2017 | |
740 | distefano | is printed matter functionally/structurally related to physical substrate, if 'no' no patentable weight | claim interpretation | 7/31/2017 | |
741 | allergan | the written desc req requires possession as shown in the spec, not as shown by prior experimental work. | 112(2) | 7/28/2017 | |
742 | union pac. | Even if the written description does not enable the claims, claim language itself may still be definite | 112(2) | 7/27/2017 | |
743 | genentech, netzer | comprising' means named elements essential but may be w/n claim scope if other elements added | claim interpretation | 7/27/2017 | |
744 | burhans | obvious if absence of any proof that order of performing the steps produces any new and unexpected result | 103 | 7/25/2017 | |
745 | gibson | selection of any order of mixing ingredients is prima facie obvious. | 103 | 7/25/2017 | |
746 | warner-jenkinsen | Each element contained in a patent claim deemed material to defining scope of patented invention | claim interpretation | 7/21/2017 | |
747 | interconnect | impermissible hindsight to use applicant's inv as template selecting elements from refs to fill gaps | 103 | 7/20/2017 | |
748 | unigene | 103 reqs more than mere showing prior art incl separate refs covering each separate limitation in a claim | 103 | 7/20/2017 | |
749 | syntex | A statement particular combination not preferred does not teach away absent clear discouragement of it | 103 | 7/19/2017 | |
750 | omega, schindler, poly-america | Ambiguous language cannot support disavowal | claim interpretation | 7/19/2017 | |
751 | Phillips, openwave | standard for disavowal exacting, req clear+unequivocal evidence claimed inv incl feature or not | claim interpretation | 7/19/2017 | |
752 | urbanski | POSITA may be motivated to pursue one refs desirable properties, foregoing benefit taught by other ref | 103 | 7/17/2017 | |
753 | winner int'l | for 103 combination, the benefits, both lost and gained, should be weighed against one another | 103 | 7/17/2017 | |
754 | donaldson | 112(6) must look to spec and interpret language in light of corresponding structure described therein | 112(6) | 7/13/2017 | |
755 | bancorp | It will ordinarily be often necessary to resolve claim construction disputes prior to a 101 analysis | claim interpretation | 7/13/2017 | |
756 | western union | holding obvious routine modifications that are part of adapting new technology to existing system | 103 | 7/12/2017 | |
757 | ormco | Where claimed range overlaps with a range disclosed in the prior art, there is a presumption of obviousness | 103 | 7/11/2017 | |
758 | alticor | construing 'operable for' as 'fit for or capable of' | claim interpretation | 7/10/2017 | |
759 | schulhauser | BRI of method claims doesn't have to include conditional limitation, but of machine claims does. | claim interpretation | 7/6/2017 | |
760 | kao2, baxter travenol | unexpected results used as evidence of nonobviousness must be compared w/ closest prior art | 103 | 7/4/2017 | |
761 | merchant | As a general guideline, closest prior art is ref that has most claim limitations in common with invention | 103 | 7/4/2017 | |
762 | nett | each case decided on its own merits: PTO??s allowance of prior registrations doesn't bind Board or this court | 7/3/2017 | ||
763 | wertheim | it is immaterial in ex parte prosecution whether the same or similar claims have been allowed to others | 7/3/2017 | ||
764 | hewlett-packard | apparatus claims cover what a device is, not what a device does. | claim interpretation | 6/30/2017 | |
765 | michlin | patentability of the structure cannot turn on the use or function of the structure | claim interpretation | 6/30/2017 | |
766 | roberts | An inventor of a structure is entitled to benefit from all of its uses, even those not described | claim interpretation | 6/30/2017 | |
767 | aquatex | term 'three dimensional shock bump' has special meaning to POSITA so Examiner's interpretion beyond BRI | claim interpretation | 6/29/2017 | |
768 | hill | To establish unexpected results over claimed range compare sufficient number of tests both inside and outside | 103 | 6/28/2017 | |
769 | linear | if spec or claims don't req distinct 'second' and 'third' circuits, separate and distinct circuits not req | claim interpretation | 6/27/2017 | |
770 | UMC | level of skill in accelerometer art is high: POSITA wld have full acad deg or equiv in either mech or elec eng | 103 | 6/26/2017 | |
771 | UMC | level of skill in accelerometer art is high: POSITA wld have full acad deg or equiv in either mech or elec eng | 103 | 6/26/2017 | |
772 | swinehart | Functional language does not, in and of itself, render a claim improper. | 112(2) | 6/22/2017 | |
773 | fox | facts which examiner rests 103 reject and added facts taken as judicial notice not denied accepted as accurate | 103 | 6/21/2017 | |
774 | grasselli | express excl of certain elements implies permissible inclusion of all other elements not expressly excl. | 112(1) | 6/21/2017 | |
775 | omega | need express disclaimer or independent lexicography in written desc to justify adding negative limitation | 112(1) | 6/21/2017 | |
776 | sovish | skill is presumed on the part of one of ordinary skill in the art | 103 | 6/20/2017 | |
777 | telectronics | 112(1) cld POSITA make invention from spec coupled w/info known in art w/o undue experimentation | 112(1) | 6/16/2017 | |
778 | apple2 | An abstract idea can generally be described at different levels of abstraction. | 101 | 6/15/2017 | |
779 | trovan | Inventorship is ques. of who actually invented subject matter claimed in patent determined claim-by-claim | 102 | 6/14/2017 | |
780 | schering | extrinsic evidence must make clear missing descriptive matter is necessarily present in anticipating ref | 102 | 6/13/2017 | |
781 | sonix | patentee need not define invention with mathematical precision to comply with definiteness requirement | 112(2) | 6/12/2017 | |
782 | honeywell | When patentee defines a claim term, definition governs, even if contrary to conventional meaning of term | claim interpretation | 6/12/2017 | |
783 | turlay | It is well established that an anticipation rejection cannot be predicated on an ambiguous reference. | 102 | 6/9/2017 | |
784 | skinner | must provide evidence / sci reas to estab functional limitation inherent characteristic b/f burden shifted | 103 | 6/8/2017 | |
785 | fracalossi | a prior art reference's disclosure is not limited to its examples | prior art | 6/6/2017 | |
786 | cutsforth | stating that a particular placement of an element is a design choice does not make it obvious | 103 | 6/3/2017 | |
787 | ACCO | where combining prior art presents POSITA two design choices, each is an obvious combination of the prior art | 103 | 6/2/2017 | |
788 | gorman | the obviousness criterion ... is not the number of references, but what they would have meant to POSITA | 103 | 6/1/2017 | |
789 | bascom | Inventive concept can be found in non-conventional and non generic arrangement of known conventional pieces | 101 | REVERSED | 5/31/2017 |
790 | rundell, leapfrog | Rendering automatic by computer that done by hand per se would have been obvious to POSITA | 103 | AFFIRMED | 5/31/2017 |
791 | atmel, Dossel | if POSITA can identity structure, material, or acts for performing claimed function 112(2) satisfied | 112(2) | REVERSED | 5/31/2017 |
792 | edwards2, abbott labs | [U]se of 'i.e.' signals an intent to define the word to which it refers. | claim interpretation | REVERSED | 5/26/2017 |
793 | BRCA | claims preemptive b/c If comb of cert. routine steps patent elig, so too wld diff comb of other routine steps | 101 | AFFIRMED | 5/25/2017 |
794 | garnero | implied structural characteristics shld be considered in product by process claim patentability analysis | claim interpretation | REVERSED | 5/24/2017 |
795 | american academy, velander | no reversible error in Examiner's assessment of weight to be given submitted evidence | claim interpretation | AFFIRMED | 5/23/2017 |
796 | inphi, wright2 | spec ok for 112(1) if conveys necessary info regardless of how + whether words open to diff interp | 112(1) | AFFIRMED | 5/22/2017 |
797 | packard | It is the claims that notify the public of what is within the protections of the patent, and what is not. | 112(2) | AFFIRMED | 5/19/2017 |
798 | yarush, casey, twomey | A device claim must include structural limitations defining invention over prior art | claim interpretation | AFFIRMED | 5/18/2017 |
799 | pilkington | patentability of claim to product not in method by which made, product itself must be new and unobvious | 103 | REVERSED | 5/17/2017 |
800 | strahilevitz | if Examiner has accept reason non-enabled, burden shifts to show POSITA cld w/o undue experimentation | 112(1) | AFFIRMED | 5/16/2017 |
801 | synopsys, accenture, content extraction | 101 inquiry must focus on the language of the Asserted Claims themselves | 101 | AFFIRMED | 5/15/2017 |
802 | grasselli2 | unexpected results limited to sodium only not commensurate in scope w/ claims to alkali metal catalyst | 103 | AFFIRMED | 5/12/2017 |
803 | gordon | not logical to base 103 on combinations that lead to frustration or inoperability of teachings of a ref. | 103 | REVERSED | 5/11/2017 |
804 | cross med., oetiker | POSITA need not see identical problem in prior art ref to be motivated to apply its teachings. | 103 | AFFIRMED | 5/10/2017 |
805 | bayer2 | can't read into a claim a limitation from a preferred embodiment, if limitation not present in claim itself | 112(2) | AFFIRMED | 5/9/2017 |
806 | affinity | is claim's 'character as a whole' directed to excluded subject matter? | 101 | AFFIRMED | 5/8/2017 |
807 | apple2, intellectual ventures2 | GUI interface to generate menus is abstract idea | 101 | AFFIRMED | 5/8/2017 |
808 | enfish | abstract idea unless claims directed to a specific improvement in the way computers operate | 101 | AFFIRMED | 5/8/2017 |
809 | marley mouldings, moore | 112(2) do claims circumscribe particular area w/ reas. degree of precision + particularity | 112(2) | REVERSED | 5/4/2017 |
810 | malico | the ability to perform a particular action 'without any reason to do so does not establish obviousness' | 103 | REVERSED | 5/3/2017 |
811 | pacing tech | the use of an expression in preamble may provide antecedent basis if referenced in body of the claim. | 112(2) | REVERSED | 5/3/2017 |
812 | wasica, verve | 102 reqs. single ref. to describe invention with sufficient precision + detail exists in prior art | 102 | REVERSED | 5/2/2017 |
813 | Heyna, dunn | for unexpected results, cause and effect sought to be proven lost here in welter of unfixed variables. | 103 | AFFIRMED | 5/1/2017 |
814 | animal | negative limitations are permissible forms of expression to define the scope of a claimed invention | 112(1) | AFFIRMED | 4/27/2017 |
815 | santarus, inphi | negative limitations ok if spec properly describes alternative features of the patented invention. | 112(1) | AFFIRMED | 4/27/2017 |
816 | ariad, vas-cath, ralston | ariad, vas-cath, ralston - 112(1) written desc. req. a ques. of fact | 112(1) | REVERSED | 4/26/2017 |
817 | packard | 112(2) indefiniteness a ques. of law | 112(2) | REVERSED | 4/26/2017 |
818 | cree | impermissible hindsight not the same as insufficient evidence of a motivation to combine the references | 103 | AFFIRMED | 4/25/2017 |
819 | kao | unexpected results must be commensurate with the scope of the claim. | 103 | AFFIRMED | 4/25/2017 |
820 | kollman | One data point insuff. to ascertain trend in exemplified data to reasonably extend probative value thereof | 103 | AFFIRMED | 4/25/2017 |
821 | thorpe | patentability of a product does not depend on its method of production | 102 | AFFIRMED | 4/24/2017 |
822 | marosi | for product by process burden is upon the applicants to come forward with evidence of unobvious difference | 103 | AFFIRMED | 4/24/2017 |
823 | eli lilly | double patenting reqs decision-maker first construe claims in patent and claims under review to show dif | 103 | REVERSED | 4/20/2017 |
824 | general foods, vogel | is claim merely obvious variation of invention claimed in double patenting asserted patent? | 103 | REVERSED | 4/20/2017 |
825 | caveney | Examiner's burden of proving non-patentability is by a preponderance of the evidence | 103 | REVERSED | 4/19/2017 |
826 | zletz | The words of the claim must be given their plain meaning unless inconsistent with the specification. | claim interpretation | REVERSED | 4/18/2017 |
827 | altiris | first look to claim to determine if as a matter of logic or grammar, it must be performed in order written | claim interpretation | REVERSED | 4/14/2017 |
828 | kerkhoven | prima facie obvious to combine 2 prior art compounds useful for same purpose to form 3d for same purpose | 103 | AFFIRMED | 4/12/2017 |
829 | farrenkopf, orthopedic | additional expense associated with the addition of inhibitors would not discourage POSITA | 103 | AFFIRMED | 4/11/2017 |
830 | affinity, alice | Limiting field of use of abstract idea to existing techno env doesn't render claims less abstract. | 101 | AFFIRMED | 4/10/2017 |
831 | Phillips | Although spec describes very specific embodiments, warned against confining claims to those embodiments | claim interpretation | AFFIRMED | 4/7/2017 |
832 | veritas | claims couched in terms of specific embodiments are not general requirements of the invention. | claim interpretation | AFFIRMED | 4/7/2017 |
833 | oetiker | The word 'persuasive' not meant to suggest Appellant bears the ultimate burden of proving patentability. | 103 | AFFIRMED | 4/6/2017 |
834 | crown packaging, ariad | original claims are part of Spec, and, in many cases, satisfy the written description req | 112(1) | AFFIRMED | 4/5/2017 |
835 | bose | lack of an antecedent basis for a claim term does not always render a claim indefinite | 112(2) | AFFIRMED | 3/31/2017 |
836 | fairwarningIP, digitech, intellectual ventures2 | no algos to manipulate existing info to generate additional info | 101 | AFFIRMED | 3/30/2017 |
837 | alice, enfish | no definitive rule to determine what constitutes an 'abstract idea' for purposes of Alice step one | 101 | REVERSED | 3/29/2017 |
838 | diamond1, thales | for Alice test, Diehr claims not abstract idea, directed to improvement in rubber curing process | 101 | REVERSED | 3/29/2017 |
839 | chapman | cannot compare the results of the invention with the results of the invention | 103 | REVERSED | 3/27/2017 |
840 | merchant | compare to determine number of claim limitations in common with each ref yields closest single prior art | prior art | REVERSED | 3/27/2017 |
841 | smartgene | mental steps of comparing new and stored information + using rules to identify med options abstract idea | 101 | AFFIRMED | 3/24/2017 |
842 | gershon | if alleged problem first recognized by appellants, could not possibly be any evidence of long-felt need | 103 | AFFIRMED | 3/24/2017 |
843 | merck3 | rejecting a proposed claim construction that would render claim terms superfluous | claim interpretation | REVERSED | 3/23/2017 |
844 | microsoft2 | The broadest reasonable interpretation does not mean the broadest possible interpretation. | claim interpretation | REVERSED | 3/23/2017 |
845 | engel2 | construe separate claim terms as reciting separate structures | claim interpretation | REVERSED | 3/22/2017 |
846 | internet patents, digitech, cybersource | Information collection and analysis is within the realm of abstract ideas | 101 | AFFIRMED | 3/21/2017 |
847 | microsoft | information as such is intangible | 101 | AFFIRMED | 3/21/2017 |
848 | williamson | the term 'unit' is a 'non-structural generic placeholder' tantamount to 'means' (i.e., a 'nonce word') | claim interpretation | REVERSED | 3/20/2017 |
849 | harris | unexpected results not commensurate in scope with claims b/c improved performance not within claimed range | 103 | AFFIRMED | 3/17/2017 |
850 | gershon, newell, cavanagh | long-felt need | 103 | REVERSED | 3/17/2017 |
851 | myriad | Myriad's claims not saved by isolating DNA severing chemical bonds creating nonnaturally occurring molecule | 101 | AFFIRMED | 3/16/2017 |
852 | roslin | Natural phenomena, including naturally occurring organisms, are not patentable. | 101 | AFFIRMED | 3/15/2017 |
853 | epstein | Examiner's rejection subject to 'preponderance of the evidence' std and Fed Rules of Evidence do not apply | prior art | AFFIRMED | 3/14/2017 |
854 | hiniker | Claim scope depends on the claim's recitations, not the teachings of the Specification. | claim interpretation | AFFIRMED | 3/13/2017 |
855 | geerdes | "Before considering the rejections . . ., we must first [determine the scope of] the claims . . . ." | claim interpretation | AFFIRMED | 3/10/2017 |
856 | ppc | Above all, the broadest reasonable interpretation must be reasonable in light of the claims and specification. | claim interpretation | REVERSED | 3/8/2017 |
857 | scientific plastic | analogous art ques. of fact req. inquiry into similarities + closeness of subj matter by POSITA | prior art | AFFIRMED | 3/7/2017 |
858 | DDR Holdings, intellectual ventures | if claims don't address problems unique to Internet, DDR has no applicability | 101 | AFFIRMED | 3/6/2017 |
859 | intamin | An independent claim impliedly embraces more subject matter than its narrower dependent claim. | 112(4) | REVERSED | 3/3/2017 |
860 | plantronics | obvious b/c common sense must contain explicit and clear reasoning providing rational underpinning why | 103 | REVERSED | 3/2/2017 |
861 | cutsforth | a reason must be offered as to why a skilled artisan would have made the specific design choice | 103 | REVERSED | 3/1/2017 |
862 | bascom | inventive concept can be found in non-conventional + non-generic arrangement of known, conventional pieces | 101 | REVERSED | 2/24/2017 |
863 | klosak | not enough to show results obtained differ from prior art: difference must be an unexpected difference | 103 | AFFIRMED | 2/23/2017 |
864 | farrenkopf | POSITA design mod not deterred due to cost increase / complexity, but wld weigh drawbacks agst benefits | 103 | REVERSED | 2/21/2017 |
865 | abbvie2 | obviousness-type double patenting analysis generally analogous to obviousness analysis under 35 USC 103 | OTDP | AFFIRMED | 2/20/2017 |
866 | biosig | if 'word of degree' used in claim, not indefinite if Spec provides some standard for measuring that degree | 112(2) | AFFIRMED | 2/17/2017 |
867 | vaeck | for enablement some experimentation is not fatal, issue is whether amount of experimentation req. is 'undue' | 112(1) | REVERSED | 2/16/2017 |
868 | alice, mayo, rapid litigation | step 1 law of nature, natural phenomena, or abstract idea? step 2 inventive concept? | 101 | AFFIRMED | 2/15/2017 |
869 | panduit | concepts' do not anticipate | 102 | AFFIRMED | 2/14/2017 |
870 | chapman | unexpected results improper to compare claimed invention to modified product merely suggested by prior art | 103 | REVERSED | 2/13/2017 |
871 | schulhauser | BRI of limitations recited as part of system claim req. structure unlike method claim conditional lims | claim interpretation | REVERSED | 2/10/2017 |
872 | daiichi | chem 103 based on structural similarity reqs POSITA motivated to select + modify prior art to make similar | 103 | AFFIRMED | 2/9/2017 |
873 | brown2 | claim covering several structures or compositions, generically or as alternatives, if any in prior art, 102 | 102 | AFFIRMED | 2/8/2017 |
874 | bancorp | using computer to perform previously known process won't transform abstract idea into patent-eligibility | 101 | AFFIRMED | 2/7/2017 |
875 | amgen | in product-by-process claim, the focus is on the product and not the process of making it. | claim interpretation | AFFIRMED | 2/6/2017 |
876 | greenliant | process of making only relevant if imparts 'structural and functional differences' distinguishing claim | claim interpretation | AFFIRMED | 2/6/2017 |
877 | grasselli | For 103, words in a claim must be considered even if they lack written description or enablement in Spec | 103 | REVERSED | 2/3/2017 |
878 | brown2 | Anticipation under 35 U.S.C. 102 is a question of fact. | 102 | REVERSED | 2/2/2017 |
879 | oetiker | If Examiner fails to set forth prima facie case of obviousness, burden to rebut never shifts to Appellant | 103 | REVERSED | 1/26/2017 |
880 | mikus, slayter, gosteli | A species of a genus anticipates the genus. | 102 | AFFIRMED | 1/23/2017 |
881 | ariosa | Where claims only disclose patent ineligible subject matter under Mayo framework, preemption made moot. | 101 | AFFIRMED | 1/20/2017 |
882 | van os | finding combination would've been 'common sense' or 'intuitive' inadequate to support motivation to combine | 103 | REVERSED | 1/19/2017 |
883 | abbott diabetes, irdeto | spec may define claim terms by implication such that meaning may be found or ascertained | claim interpretation | REVERSED | 1/18/2017 |
884 | rembrandt | apparatus claim reciting active transmitting step indefinite | 112(2) | AFFIRMED | 1/16/2017 |
885 | boesch | Discovery of an optimum value of a result effective variable.. .is ordinarily within the skill of the art | 103 | AFFIRMED | 1/13/2017 |
886 | jacoby | An artisan must be presumed to know something about the art apart from what the references disclose. | 103 | AFFIRMED | 1/12/2017 |
887 | lantech, robertson | where claim req. two elements, one element construed as having two separate functions not ok | 102/103 | REVERSED | 1/11/2017 |
888 | sakraida | simply arranging old elements with each performing same function it had been known to perform is obvious. | 103 | AFFIRMED | 1/10/2017 |
889 | content extraction, cyberfone, electric power | collecting data + transfer from one dest. to another abstract ideas | 101 | AFFIRMED | 1/6/2017 |
890 | shortridge | Merely combining several abstract ideas does not render the combination any less abstract. | 101 | REVERSED | 1/5/2017 |
891 | intouch | hindsight when conclusory belief POSITA could combine references, not would have been motivated to do so | 103 | REVERSED | 1/5/2017 |
892 | content extraction | collecting data, recognizing certain data w/in, storing recognized data in memory abstract idea | 101 | AFFIRMED | 1/4/2017 |
893 | arendi | common knowledge can be relied on in 103 "to provide known motivation to combine, not to supply a missing claim limitation" | 103 | REVERSED | 1/3/2017 |
894 | hedges | impermissible in 103 to pick and choose from any one ref excluding what such ref fairly suggests to POSITA | 103 | REVERSED | 12/30/2016 |
895 | schulhauser | construing method claim according to BRI, conditional steps in process claims need not be carried out | claim interpretation | AFFIRMED | 12/30/2016 |
896 | alza2 | legal determinations of obviousness, as with such determinations generally, should be based on evidence | 103 | REVERSED | 12/29/2016 |
897 | otsuka | possession of promising useful properties ... motivates a chemist to make structurally similar compounds. | 103 | AFFIRMED | 12/28/2016 |
898 | goeddel | That a modified gene could have been “envisioned” does not establish constructive reduction to practice | 112(1) | AFFIRMED | 12/28/2016 |
899 | alza2 | flexibility in obviousness jurisprudence because motivation may be found implicitly in the prior art. | 103 | AFFIRMED | 12/23/2016 |
900 | aspex | "adapted to" has narrower "configured to" meaning, req. elements designed to accomplish specified objective | claim interpretation | REVERSED | 12/22/2016 |
901 | symbol tech. | a non-enabling reference may qualify as prior art for the purpose of determining obviousness | 103 | AFFIRMED | 12/21/2016 |
902 | vaidvanathan | examiner shld not rely on conclu. stmts particular feat. of invention wld have been obvious or well known | 103 | REVERSED | 12/20/2016 |
903 | gunn2 | refs published after filing date of appellant’s application not evidence of subject matter known to POSITA | prior art | AFFIRMED | 12/20/2016 |
904 | ariosa | preemption so patent ineligible, but absence of complete preemption doesn't demonstrate patent eligibility | 101 | AFFIRMED | 12/16/2016 |
905 | hoch | Where a reference is relied on to support rejection no excuse for not positively including the reference | 103 | REVERSED | 12/15/2016 |
906 | glass | applicant's obligation is to supply enabling disclosure without reliance on what others may publish after | 112(1) | AFFIRMED | 12/15/2016 |
907 | kropa | if preamble provides antecedence for ensuing claim terms limits the claim, giving life, meaning and vitality | claim interpretation | REVERSED | 12/15/2016 |
908 | applied materials | optimizing result-effective variable patentable if range critical + new and unexpected result | 103 | AFFIRMED | 12/13/2016 |
909 | McLaughlin | knowledge relied upon by Examiner gleaned only from Appellant's disc. not within POSITA level hindsight | 103 | AFFIRMED | 12/12/2016 |
910 | genetic techs | unpatentable under 101 where novelty adds little more than restatement of the natural law itself | 101 | AFFIRMED | 12/9/2016 |
911 | agrizap | textbook case claims combining familiar elements according to known methods that yield predictable results | 103 | AFFIRMED | 12/9/2016 |
912 | man machine | "adapted to" means "made to," "designed to," "configured to," more broadly "capable of," "suitable for" | claim interpretation | AFFIRMED | 12/8/2016 |
913 | breslow | chemical intermediates are patentable compositions of matter under 101 even if they are “transitory, unstable, and non-isolatable" | 101 | REVERSED | 12/7/2016 |
914 | bristol-myers2 | unexpected results: difference between results and closest prior art + diff not expected by POSITA | 103 | AFFIRMED | 12/6/2016 |
915 | alice, mayo, amdocs | at some level, all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas | 101 | REVERSED | 12/5/2016 |
916 | hoffmann | Conclusive proof of efficacy is not necessary to show obviousness. | 103 | AFFIRMED | 12/2/2016 |
917 | interval | terms of degree require some measure from a baseline | 112(2) | AFFIRMED | 12/1/2016 |
918 | aspex | the phrase "configured to" is narrower than "capable of" and has a meaning more akin to "designed to" | claim interpretation | REVERSED | 11/30/2016 |
919 | beattie | The law does not require that the references be combined for the reasons contemplated by the inventor. | 103 | AFFIRMED | 11/29/2016 |
920 | inphi, johnson | [n]egative claim limitations adequately supported if spec describes reason to exclude limitation | 112(1) | REVERSED | 11/25/2016 |
921 | Nystrom | When different words or phrases are used in separate claims, a difference in meaning is presumed. | claim interpretation | REVERSED | 11/24/2016 |
922 | Phillips | a dependent claim that adds a limitation gives rise to presumption it is not present in independent claim | claim interpretation | REVERSED | 11/24/2016 |
923 | sunrace | claim differentiation esp strong when limitation only meaningful difference between indep and dep claim | claim interpretation | REVERSED | 11/24/2016 |
924 | dystar, dembiczak | question is whether POSITA possesses knowledge and skills capable of combining prior art refs | 103 | AFFIRMED | 11/22/2016 |
925 | chilowsky2 | If operation conflicts with science clear evidence req to overcome strong presumption of inoperativeness | 101 | REVERSED | 11/21/2016 |
926 | par pharmaceutical | obviousness inherency limited, present only when 'natural result' of combination of prior art | 103 | REVERSED | 11/18/2016 |
927 | keller | test for obviousness is what the combined teachings of the references would have suggested to POSITA | 103 | AFFIRMED | 11/17/2016 |
928 | cable | gross sales figures do not show commercial success absent evidence as to market share | 103 | AFFIRMED | 11/16/2016 |
929 | merchant | can effectively rebut prima facie case of obviousness by comparing claimed inv. against closest prior art | 103 | REVERSED | 11/15/2016 |
930 | tiffin | impermissible to require the Appellants to compare the claimed invention against the claimed invention. | 103 | REVERSED | 11/15/2016 |
931 | genentech | Tossing out the mere germ of an idea does not constitute enabling disclosure. | 112(1) | AFFIRMED | 11/11/2016 |
932 | nat'l recovery | scope of enablement is disclosed in spec + what wld be known to POSITA w/o undue experimentation | 112(1) | AFFIRMED | 11/11/2016 |
933 | sensonics, interconnect | invention viewed not after blueprint drawn by inventor, but as perceived by POSITA at time | 103 | AFFIRMED | 11/8/2016 |
934 | profectus | construction that stays true to claim lang and naturally aligns with desc of inv correct construction | claim interpretation | REVERSED | 11/7/2016 |
935 | content extraction | humans have always performed the functions of data collection, recognition, and storage | 101 | AFFIRMED | 11/4/2016 |
936 | Becton | Where a claim lists elements separately, those elements are distinct components of the patented invention | claim interpretation | REVERSED | 11/3/2016 |
937 | B.G.Corp | All machines made up of elements capable of infinity of permutations. act of selection is the invention | 103 | REVERSED | 11/2/2016 |
938 | KSR | patent composed of several elements not proved obvious by demonstrating each element indep. known in prior art | 103 | REVERSED | 11/2/2016 |
939 | halliburton, general electric | indefinite to recite the already seen, then use func lang at exact point of novelty | 112(2) | AFFIRMED | 11/1/2016 |
940 | rose | the size not ordinarily matter of invention, but using two display panels is more than just a change in size. | 103 | REVERSED | 10/28/2016 |
941 | peterson | In cases involving overlapping ranges even a slight overlap establishes prima facie case of obviousness | 103 | AFFIRMED | 10/27/2016 |
942 | marcum, topliff | A mere duplication of parts is not invention. | 103 | AFFIRMED | 10/26/2016 |
943 | leshin | for design choice POSITA must know material is suitable for the intended use | 103 | REVERSED | 10/25/2016 |
944 | typhoon, microprocessor | claimed functional lang assoc. with programming can't be ignored when applying prior art | claim interpretation | REVERSED | 10/24/2016 |
945 | blue calypso | 102 prior art must disclose each/every element of claimed invention arranged or combined in same way | 102 | REVERSED | 10/20/2016 |
946 | antares | for reissue not enough if new invention suggested or indicated, must be clearly + unequivocally disclosed | 251 | REVERSED | 10/20/2016 |
947 | galderma | no teaching away if ref doesn't criticize, discredit, or discourage investigation into claimed invention | 103 | AFFIRMED | 10/19/2016 |
948 | man machine, NTP | BRI claim construction cannot be divorced from the specification and the record evidence. | claim interpretation | REVERSED | 10/18/2016 |
949 | microsoft2 | unreasonably broad construction which doesn't reasonably reflect plain lang in spec won't pass muster | claim interpretation | REVERSED | 10/18/2016 |
950 | mayo, diamond1 | new combination of steps in process may be patentable even though all constituents were well known | 101 | REVERSED | 10/17/2016 |
951 | irdeto | spec may define claim terms by implication such that meaning may be ascertained by reading patent docs | claim interpretation | REVERSED | 10/17/2016 |
952 | cyclobenzaprine, kubin | Where prior art gives only gen. guidance how to achieve, 'obvious-to-try' 103 impermissible | 103 | REVERSED | 10/14/2016 |
953 | smith2 | Appending purely conventional steps to an abstract idea (wagering game) not sufficiently inventive concept | 101 | AFFIRMED | 10/13/2016 |
954 | dystar, dembiczak | motivation to combine need not be found in prior art, may be POSITA, nature of prob to be solved | 103 | AFFIRMED | 10/12/2016 |
955 | mformation | claim reqs ordering of steps when claim language reqs it or spec directly or implicitly reqs it | claim interpretation | REVERSED | 10/11/2016 |
956 | prindle | Mere recognition of latent properties does not render otherwise obvious claimed subject matter unobvious | 103 | AFFIRMED | 10/7/2016 |
957 | ochiai | 103 req searching comparison of claimed invention-including all its limitations-with the prior art teaching | 103 | REVERSED | 10/5/2016 |
958 | kunzmann | a finding not shown by the Appellant to be erroneous may be accepted as fact | appellate procedure | AFFIRMED | 10/5/2016 |
959 | Kinetic, innogenetics | mech appl of t-s-m test inappropriate, but no hindsight reconstruction to reach claimed inv | 103 | REVERSED | 10/4/2016 |
960 | yeda | spec describes invention that has certain undisclosed yet inherent properties, serves as adequate writ desc | 112(1) | REVERSED | 10/3/2016 |
961 | swartz | substantial evidence POSITA would 'reasonably doubt' asserted utility and operability of cold fusion | 101 | AFFIRMED | 9/30/2016 |
962 | leo | where no motivation to combine / expectation of success problem not known, solution not predictable nonobvious | 103 | AFFIRMED | 9/29/2016 |
963 | giannelli | When writ desc makes clear 'adapted to' has narrower meaning, the "adapted to" clause limits the claims | claim interpretation | REVERSED | 9/26/2016 |
964 | wilder3 | claiming compound structurally similar to prior art must rebut presumed expectation has similar properties | 103 | AFFIRMED | 9/23/2016 |
965 | japikse, fritch | no per se rule of 103 by rearrangement of parts, must articulate reason to support modification | 103 | REVERSED | 9/23/2016 |
966 | microsoft2 | unreasonably broad const which doesn't reasonably reflect plain language + disclosure won't pass muster | claim interpretation | REVERSED | 9/22/2016 |
967 | NTP, cortright, suitco surface, microsoft2 | A construction that is "unreasonably broad" and which doesn't reasonably reflect plain language + disclosure won't pass muster | claim interpretation | REVERSED | 9/22/2016 |
968 | robins, gardner | Breadth is not indefiniteness | 112(2) | REVERSED | 9/20/2016 |
969 | intra corp, dennison | improper to pick and choose claimed elements from prior art refs using patent as blueprint | 103 | REVERSED | 9/19/2016 |
970 | hiniker | invention disclosed in written desc may be outstanding in its field, but the name of the game is the claim | claim interpretation | REVERSED | 9/15/2016 |
971 | ahlert | official notice in rejection must be capable of instant & unquestionable demonstration as being well-known | 103 | REVERSED | 9/14/2016 |
972 | on-line | A claim interpretation that excludes preferred embodiment from scope of claim is rarely, if ever, correct | claim interpretation | REVERSED | 9/14/2016 |
973 | intelligent | reas expectation of success refers to likelihood of success combining refs to meet claimed limitations | 103 | REVERSED | 9/13/2016 |
974 | interval | Claim language employing terms of degree definite where provides POSITA certainty in context of invention | 112(2) | REVERSED | 9/12/2016 |
975 | harnisch | Markush: compounds have common functional utility and substantial structural feature essential to utility | 112(2) | REVERSED | 9/9/2016 |
976 | harris | harris - use of the term 'about' shows applicants did not intend to limit claimed ranges to their exact end-points | claim interpretation | AFFIRMED | 9/8/2016 |
977 | hubbel, kaplan | double patenting if PTO not responsible for delay causing second-filed app to issue prior to first | double patenting | AFFIRMED | 9/7/2016 |
978 | miles labs | for 112(2) sufficient support if POSITA would understand bounds of the claim when read in light of spec | 112(2) | REVERSED | 9/5/2016 |
979 | versata | Using organizational and product group hierarchies to determine a price an abstract idea, no tangible form | 101 | AFFIRMED | 9/2/2016 |
980 | schulpen, hartman | no 103 when the modification proposed by the Examiner would run counter to teaching of prior art | 103 | REVERSED | 9/1/2016 |
981 | interval | The claims, when read in light of the specification, must provide objective boundaries for POSITA. | 112(2) | AFFIRMED | 8/31/2016 |
982 | greenliant | in determining validity of a product-by-process claim focus is on product and not process of making it. | claim interpretation | AFFIRMED | 8/30/2016 |
983 | nat'l recovery | The scope of enablement is disclosed in spec plus what is known to POSITA w/o undue experimentation | 112(1) | AFFIRMED | 8/26/2016 |
984 | lukach | for 102 description of single embodiment of broadly described subject matter is description of invention | 102 | AFFIRMED | 8/25/2016 |
985 | net moneyin | for 102 not enough that prior art includes multiple, distinct teachings artisan might somehow combine | 102 | REVERSED | 8/24/2016 |
986 | rice | Changes that do not alter function ordinarily are obvious variations. | 103 | AFFIRMED | 8/23/2016 |
987 | dunn, shuping | teaching an alternative method does not teach away from the use of a claimed method. | 103 | AFFIRMED | 8/22/2016 |
988 | eaton2, electro sci | When limitations in claim body rely upon the preamble, it may act as necessary component | claim interpretation | REVERSED | 8/19/2016 |
989 | king | informing a patient about the benefits of a drug in no way transforms process of taking the drug with food | claim interpretation | REVERSED | 8/18/2016 |
990 | metabolite | breadth is not indefiniteness provided skilled artisan reasonably apprised of the meaning of the claim | 112(2) | REVERSED | 8/17/2016 |
991 | sciele | A benefit gained from a combination is a motivation to make such a combination. | 103 | AFFIRMED | 8/16/2016 |
992 | streck | undue experimentation not simple determination, conclusion reached by weighing many factual considerations | 103 | REVERSED | 8/15/2016 |
993 | seid | ornamentation cannot be relied upon to distinguish prior art, but it must have allegedly novel features | 103 | REVERSED | 8/12/2016 |
994 | corning glass | effect of preamble determined by reviewing entirety of the Appellants' disclosure | claim interpretation | REVERSED | 8/11/2016 |
995 | crish | claims were broader notwithstanding use of transitional phrase "consists of" because also used "comprising" | claim interpretation | AFFIRMED | 8/10/2016 |
996 | urbanski | POSITA motivated to pursue desirable properties of one prior art even if meant foregoing benefit of other | 103 | AFFIRMED | 8/9/2016 |
997 | ehrreich | no 103 if existence of all claimed limitations or any suggestion leading to their combination not shown | 103 | REVERSED | 8/9/2016 |
998 | thorpe | patentability is determined by the actual product made - not the process by which it is made | claim interpretation | AFFIRMED | 8/8/2016 |
999 | cortright, brana | utility in doubt if written desc suggests unbelievable undertaking or implausible scientific prin | 101 | AFFIRMED | 8/5/2016 |
1000 | SRI | it is the claims that measure the invention | claim interpretation | AFFIRMED | 8/5/2016 |
1001 | Phillips | although spec often describes specific embodiments of invention can't confine claims to those embodiments | claim interpretation | AFFIRMED | 8/4/2016 |
1002 | cortright | PTO's claim terms interpretation not so broad conflicts with meaning of identical terms in analogous art | claim interpretation | REVERSED | 8/4/2016 |
1003 | antor media | prior art cannot anticipate if allegedly anticipatory disclosures cited as prior art are not enabled | 102 | REVERSED | 8/2/2016 |
1004 | soverain | using hypertext to communicate information no more than routine incorporation of Internet technology | 103 | AFFIRMED | 8/1/2016 |
1005 | ariad, rochester | written description req ensures right to exclude scope doesn't overreach inventor's contribution | 112(1) | REVERSED | 7/28/2016 |
1006 | alice, mayo | claim elements individually or ordered combination transform nature of claim into patent-eligiblility | 101 | REVERSED | 7/27/2016 |
1007 | verve | substantially may well satisfy the charge to 'particularly point out and distinctly claim' the invention | 112(2) | REVERSED | 7/27/2016 |
1008 | kahn | there must be some articulated reasoning with some rational underpinning for legal conclusion of obviousness | 103 | REVERSED | 7/25/2016 |
1009 | KSR | 103 requires establishing that prior art provided POSITA with reason to modify to arrive at claimed invention | 103 | REVERSED | 7/25/2016 |
1010 | newell | [O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved. | 103 | AFFIRMED | 7/22/2016 |
1011 | new wrinkle | Where result the same steps taken concurrently equivalent not patentable over steps taken successively | claim interpretation | AFFIRMED | 7/22/2016 |
1012 | chu | obvious design choice precluded if claimed structure and function it performs different from prior art | 103 | REVERSED | 7/21/2016 |
1013 | soverain, ormco | if dependent claim determined obvious broader claim from which it depends necessarily also obvious | 103 | REVERSED | 7/21/2016 |
1014 | engel | The enablement requirement is met if the description enables any mode of making and using the invention. | 112(1) | REVERSED | 7/21/2016 |
1015 | ruskin | finding merely functionally equivalent structure to anticipate the specific structure claimed was error | 102 | REVERSED | 7/18/2016 |
1016 | procter & gamble, grabiak | "adequate support in the prior art" for changing structure of prior art compound for 103 | prior art | REVERSED | 7/18/2016 |
1017 | life techs | Expectation of success is assessed from perspective of POSITA, at the time the invention was made | 103 | REVERSED | 7/15/2016 |
1018 | C.R. Bard | preamble did not limit claim scope where it merely stated intended use or purpose of the invention | claim interpretation | REVERSED | 7/15/2016 |
1019 | stencel | if statement of intended purpose constitutes limitation determined case by case in view of whole invention | claim interpretation | REVERSED | 7/15/2016 |
1020 | hogan | Later publications may be used as evidence of the state of the art existing on filing date of an application | prior art | REVERSED | 7/15/2016 |
1021 | voter verified | It is well established that a human being cannot constitute a means within the scope of 112(6) | 112(6) | AFFIRMED | 7/14/2016 |
1022 | griffin | "wherein" clause limits a process claim where clause gives "meaning and purpose to the manipulative steps" | claim interpretation | REVERSED | 7/14/2016 |
1023 | baxter travenol | Anticipation is a question of fact based on a preponderance of the evidence. | 102 | REVERSED | 7/12/2016 |
1024 | smithkline | "breadth is not indefiniteness." | 112(2) | REVERSED | 7/12/2016 |
1025 | ultimax | claiming broadly doesn't render claim insolubly ambiguous, nor prevent public from understanding the scope | claim interpretation | REVERSED | 7/12/2016 |
1026 | miller | All words in a claim must be considered in judging the patentability of that claim against the prior art. | claim interpretation | REVERSED | 7/7/2016 |
1027 | lowry, ngai | nonfunctional descriptive material cannot render nonobvious invention otherwise wld've been obvious | 103 | AFFIRMED | 7/6/2016 |
1028 | skvorecz | broadest reasonable interpretation does not include giving claims a legally incorrect interpretation. | claim interpretation | REVERSED | 7/5/2016 |
1029 | deering | the term 'substantially' in this context is used as a term of magnitude. | claim interpretation | REVERSED | 7/4/2016 |
1030 | epcon | the phrase 'substantially below' signifies language of magnitude | claim interpretation | REVERSED | 7/4/2016 |
1031 | concrete pipe | preponderance of evidence simply requires trier of fact to believe existence more probable than not | 103 | AFFIRMED | 7/1/2016 |
1032 | wesslau | using only select portions of multiple references to piece together claimed invention not proper 103 basis | 103 | REVERSED | 7/1/2016 |
1033 | kotzab | even 103 based on a single prior art reference must have suggestion or motivation to modify the reference. | 103 | REVERSED | 6/30/2016 |
1034 | van wanderham, sporck | Once appellant's solution disclosed, easy to see how to modify and manipulate prior art | 103 | REVERSED | 6/29/2016 |
1035 | kao, DBC | for commercial success not every conceivable embodiment, just that what was sold within scope of claims. | 103 | REVERSED | 6/28/2016 |
1036 | belden | 103 concerns whether POSITA not only could have made but would have been motivated to make combination | 103 | REVERSED | 6/27/2016 |
1037 | dystar | 103 not only whether POSITA motivated to combine prior art but also reasonable expectation of success | 103 | REVERSED | 6/24/2016 |
1038 | mangosojt | rejecting claim construction that would render a claim term superfluous | claim interpretation | REVERSED | 6/23/2016 |
1039 | mewherter | if spec doesn't limit "machine readable storage medium" to exclude transitory media includes transitory | 101 | AFFIRMED | 6/22/2016 |
1040 | dance | simple prior art rarely characteristic weighing against obviousness of complicated device + added function | 103 | AFFIRMED | 6/21/2016 |
1041 | kemps | motivation to combine references does not have to be identical to that of applicant to establish obviousness | 103 | AFFIRMED | 6/20/2016 |
1042 | unigene | obviousness requires additional showing that POSITA would have selected and combined prior art elements | 103 | REVERSED | 6/20/2016 |
1043 | gal | obvious design choice precluded when claimed structure and function it performs are different from prior art | 103 | REVERSED | 6/17/2016 |
1044 | brenner | patent is not a hunting license, not reward for the search, but compensation for its successful conclusion | appellate procedure | AFFIRMED | 6/16/2016 |
1045 | rice | not design choice if differences between claim and prior art result in difference in function or unexp result | 103 | REVERSED | 6/15/2016 |
1046 | bilski | The machine-or-transformation test is not sole test for deciding if invention is patent-eligible process | 101 | REVERSED | 6/14/2016 |
1047 | griffin | new use for old product not patentable whether an intended use is recited in preamble or a wherein clause | claim interpretation | AFFIRMED | 6/13/2016 |
1048 | schreiber | recitation of a new intended use for an old product does not make a claim to that old product patentable | claim interpretation | AFFIRMED | 6/10/2016 |
1049 | 37 C.F.R. 1.3 | An attorney is required to conduct [his or her] business with the USPTO with decorum and courtesy. | appellate procedure | REVERSED | 6/9/2016 |
1050 | carnegie | mere possession of apparatus does not teach or suggest all possible processes to which it may be adapted | 103 | REVERSED | 6/8/2016 |
1051 | seattle box | if use word of degree must determine whether patent's spec provides some standard for measuring degree | 112(2) | AFFIRMED | 6/7/2016 |
1052 | tomtom | Whether preamble claim limitation determined on facts of each case in light of claim + invention described | claim interpretation | AFFIRMED | 6/7/2016 |
1053 | rose | [T]he size of the article under consideration . . . is not ordinarily a matter of invention. | 103 | AFFIRMED | 6/6/2016 |
1054 | mouttet, etter | obviousness based on multiple references does not require actual, physical substitution of elements | 103 | AFFIRMED | 5/31/2016 |
1055 | ratti | Combinations that change principles under which prior art designed to operate may weigh against obviousness | 103 | AFFIRMED | 5/31/2016 |
1056 | o'farrell | "obvious to try" means either to vary parameters or explore new technology so not the standard under 103 | 103 | REVERSED | 5/27/2016 |
1057 | credle | Whether a claim is indefinite is an issue of law. | 112(2) | REVERSED | 5/26/2016 |
1058 | robertson | the odd use of fasteners with other than their mates insufficient to establish inherency. | 102 | REVERSED | 5/25/2016 |
1059 | hewlett-packard | prior art that sometimes, but not always, embodies claimed method nonetheless teaches that aspect | 103 | AFFIRMED | 5/25/2016 |
1060 | seattle box | When word of degree is used in claim, incumbent upon Appellants to provide standard for measuring it. | 112(2) | AFFIRMED | 5/25/2016 |
1061 | optical disc | Without evidence of express intent to impart novel meaning to claim term, takes on ordinary meaning | claim interpretation | AFFIRMED | 5/25/2016 |
1062 | american medical | preamble inot limiting if can be deleted and claim body describes structurally complete invention | claim interpretation | AFFIRMED | 5/18/2016 |
1063 | falco-gunter | if literature provides genes and their nucleotide sequences 112(1) does not req. their recitation | 112(1) | REVERSED | 5/17/2016 |
1064 | michlin | patentability of apparatus claims must depend upon structural limitations not upon statements of function | claim interpretation | AFFIRMED | 5/16/2016 |
1065 | ACCO | one possible obvious combination falls outside claims fails to undercut other obvious combination lies within | 103 | AFFIRMED | 5/13/2016 |
1066 | otto | inclusion of material or article worked upon by a structure being claimed does not impart patentability | claim interpretation | AFFIRMED | 5/13/2016 |
1067 | thibault | Expressions relating apparatus to contents during intended operation of no significance to patentability | claim interpretation | AFFIRMED | 5/13/2016 |
1068 | wertheim | pointing to fact that claim I reads on embodiments outside scope of description satisfied 112(1) burden | 112(1) | AFFIRMED | 5/11/2016 |
1069 | wrigley | a combination where all required to obtain it is to substitute one well-known agent for another is obvious | 103 | AFFIRMED | 5/10/2016 |
1070 | wesslau, bausch & lomb | for 103 impermissible to pick and choose from one ref only so much as will support position | 103 | REVERSED | 5/9/2016 |
1071 | K-2 | the Office may not read the claims in a way that would effectively expunge a term from the claim language | claim interpretation | REVERSED | 5/6/2016 |
1072 | Morris | PTO applies to claim broadest reasonable meaning of words in ordinary usage as wld be understood by POSITA | claim interpretation | REVERSED | 5/6/2016 |
1073 | bose | no dispute that mathematically an inherent characteristic of an ellipse is a major diameter | 102 | AFFIRMED | 5/3/2016 |
1074 | may, nolan | unexpected results must be weighed against prima facie obviousness in making a final 103 determination | 103 | AFFIRMED | 5/3/2016 |
1075 | gordon | If proposed modification renders prior art unsatisfactory for intended purpose, no suggestion or motivation | 103 | REVERSED | 4/27/2016 |
1076 | belden | 103 POSITA not only could have made but would have been motivated to make combinations or modifications | 103 | REVERSED | 4/26/2016 |
1077 | cronyn, constant | dissemination and public accessibility key to legal determination whether prior art ref published | prior art | REVERSED | 4/25/2016 |
1078 | ethicon | rejecting an interpretation that renders a limitation meaninglessly empty | claim interpretation | REVERSED | 4/22/2016 |
1079 | typhoon touch, microprocessor | capable of test req. prior art capable of performing function w/o more programming | claim interpretation | REVERSED | 4/22/2016 |
1080 | atlas powder, best | claiming of unknown property inherently present in prior art does not make claims patentable. | 102 | AFFIRMED | 4/20/2016 |
1081 | santarus | Negative claim limitations supported when specification describes reason to exclude relevant limitation | claim interpretation | AFFIRMED | 4/19/2016 |
1082 | toshiba, hewlett-packard | apparatus claims cover what a device is, not what a device does. | claim interpretation | AFFIRMED | 4/18/2016 |
1083 | griffin | wherein clause limiting if it provides "meaning and purpose to the manipulative steps" of the claim | claim interpretation | AFFIRMED | 4/15/2016 |
1084 | swartz, enzo, fisher, fouche, newman | utility (question of fact) and enablement (question of law) closely related | 101 | AFFIRMED | 4/12/2016 |
1085 | swartz, enzo, fisher, fouche, newman | utility (question of fact) and enablement (question of law) closely related | 112(1) | AFFIRMED | 4/12/2016 |
1086 | gordon | If modification would render prior art unsatisfactory for intended purpose, no 103 suggestion or motivation | 103 | AFFIRMED | 4/11/2016 |
1087 | ratti | where prior art taught device required rigidity to operate but claimed invention req. resiliency not obvious | 103 | AFFIRMED | 4/11/2016 |
1088 | clinton | obviousness does not require absolute predictability, but a reasonable expectation of success is necessary | 103 | AFFIRMED | 4/7/2016 |
1089 | scientific plastic | reference's pertinence must be with foresight of POSITA, not hindsight of inventor's success | 103 | AFFIRMED | 4/7/2016 |
1090 | DDR Holdings | recitation of generic computer elements doesn't make claim directed to abstract idea patent-eligible | 101 | AFFIRMED | 4/6/2016 |
1091 | gurley | ref teaches away when POSITA, upon reading it . . . would be discouraged from following the path set out | 103 | REVERSED | 4/1/2016 |
1092 | innovention toys | 103 must explain how prior art would have commended itself to inventor considering the problem | 103 | REVERSED | 4/1/2016 |
1093 | verdegaal, bond | for 102 every element expressly or inherently described in single prior art arranged as in claim | 102 | REVERSED | 3/31/2016 |
1094 | metabolite | preamble may provide claim const. context if intended use statement basis for distinguishing prior art | claim interpretation | REVERSED | 3/30/2016 |
1095 | NTP | 131 dec. OK to establish a prior invention date, no mandate for some heightened independent corroboration | prior art | REVERSED | 3/29/2016 |
1096 | steele | error to affirm a rejection of indefinite claims under 35 U.S.C. 103(a) | 112(2) | REVERSED | 3/28/2016 |
1097 | bing shun, badasa | Wikipedia unreliable (l) not peer reviewed; (2) authors unknown; (3) anyone can contribute | prior art | AFFIRMED | 3/25/2016 |
1098 | kahn | there must be some articulated reasoning and rational underpinning to support legal conclusion of obviousness | 103 | REVERSED | 3/24/2016 |
1099 | williamson | 112(6): words of claim understood by POSITA to have sufficiently definite meaning as name for structure | 112(6) | REVERSED | 3/23/2016 |
1100 | elan pharm., donohue | To serve as an anticipating reference, must enable that which it is asserted to anticipate | 102 | REVERSED | 3/22/2016 |
1101 | trading tech. | To benefit from prior filing date, a provisional must provide adequate 112(1) written description | 112(1) | REVERSED | 3/22/2016 |
1102 | kennametal, petering | a 102 if POSITA, reading the ref, would 'at once envisage' claimed arrangement / combination. | 102 | AFFIRMED | 3/21/2016 |
1103 | IPXL | claim reciting both system (or apparatus) and method of using that system (or apparatus) invalid under 112(2) | 112(2) | AFFIRMED | 3/18/2016 |
1104 | katz interactive, ultimatepointer | "placed in an initial operating state" directed to user actions, not system capabilities | 112(2) | AFFIRMED | 3/18/2016 |
1105 | buysafe | claims squarely about creating a contractual relationship are an abstract idea | 101 | REVERSED | 3/17/2016 |
1106 | DDR Holdings | claim rooted in computer tech to overcome problem specifically arising in networks not abstract idea | 101 | REVERSED | 3/17/2016 |
1107 | gulack | critical question: new and unobvious functional relationship existing between printed matter and substrate? | 102 | AFFIRMED | 3/16/2016 |
1108 | ngai | if so anyone could continue patenting a product indefinitely provided they add a new instruction sheet to it | 102 | AFFIRMED | 3/16/2016 |
1109 | hoch | Where reference is relied on in rejection, whether or not in a 'minor capacity,' rejection must include it | 103 | REVERSED | 3/15/2016 |
1110 | rosselet, hedges | obviousness test not whether express suggestion of invention present in any or all references | 103 | AFFIRMED | 3/14/2016 |
1111 | thorner | To act as his own lexicographer, the patentee must clearly express an intent to redefine the term | claim interpretation | AFFIRMED | 3/11/2016 |
1112 | cortright | BRI must be consistent with ordinary meaning of term, use of term in spec and POSITA interpretation | claim interpretation | REVERSED | 3/11/2016 |
1113 | atlas powder, dinh-nguyen | It is not function of the claims to specifically exclude possible inoperative substances | claim interpretation | REVERSED | 3/10/2016 |
1114 | fallaux | harassment justification for obviousness-type double patenting pertinent if app & patent not commonly owned | 103 | AFFIRMED | 3/9/2016 |
1115 | ochiai, torpharm | 103 req fact-intensive comparison of claimed process with prior art not application of per se rule | 103 | REVERSED | 3/9/2016 |
1116 | woodruff | merely discovering and claiming a new benefit of an old process cannot render process again patentable | 103 | AFFIRMED | 3/8/2016 |
1117 | zierden | new use for an otherwise old or obvious composition cannot render a claim to the composition patentable. | 103 | AFFIRMED | 3/8/2016 |
1118 | medichem | simultaneous advantages and disadvantages does not necessarily obviate motivation to combine | 103 | AFFIRMED | 3/7/2016 |
1119 | par pharmaceutical | reasonable expectation of success 103 req. does not necessitate absolute certainty for success | 103 | AFFIRMED | 3/7/2016 |
1120 | applied materials | unexpected results must be different in kind and not merely in degree from results of prior art | 103 | AFFIRMED | 3/4/2016 |
1121 | baxter travenol | unexpected results must be shown to be unexpected compared with the closest prior art. | 103 | AFFIRMED | 3/4/2016 |
1122 | soni | unexpected results must show claimed invention exhibits superior property POSITA wld have found surprising | 103 | AFFIRMED | 3/4/2016 |
1123 | phillips | Claims may embrace different subject matter than is illustrated in the specific embodiments in the spec | claim interpretation | AFFIRMED | 3/3/2016 |
1124 | SRI | [i]t is the claims that measure the invention. | claim interpretation | AFFIRMED | 3/3/2016 |
1125 | panduit | cts shld consider prior art refs in entirety including those portions that would argue against obviousness | prior art | REVERSED | 3/2/2016 |
1126 | johnston | optional elements do not narrow the claim because they can always be omitted | claim interpretation | AFFIRMED | 3/1/2016 |
1127 | burr | "[a] machine is a concrete thing, consisting of parts, or of certain devices and combination of devices." | 101 | AFFIRMED | 2/26/2016 |
1128 | schreiber, hallman | reason to believe prior art inherently capable of performing claimed function, burden shifts | prior art | AFFIRMED | 2/26/2016 |
1129 | coley | Where there is doubt regarding the teachings of a reference, the scales should be inclined toward applicant. | 102 | REVERSED | 2/25/2016 |
1130 | abbott diabetes, suitco surface | BRI no unfettered license to interpret claims to embrace anything remotely related | claim interpretation | REVERSED | 2/24/2016 |
1131 | oelrich | An inherent characteristic must be inevitable, and not merely a possibility or probability. | 102 | REVERSED | 2/23/2016 |
1132 | kahn | need some articulated reasoning with some rational underpinning to support legal conclusion of obviousness | 103 | REVERSED | 2/22/2016 |
1133 | becton | Where claim lists elements separately, implication is those elements are distinct components of invention. | claim interpretation | REVERSED | 2/19/2016 |
1134 | chore-time | invention may be held obvious without specific finding of level of skill where prior art reflects level | 103 | AFFIRMED | 2/18/2016 |
1135 | okajima, litton | if prior art reflects appropriate level of skill absence of specific findings not reversible error | 103 | AFFIRMED | 2/18/2016 |
1136 | self, superguide, e-pass | patentability may not be based on limitations not appearing in the claims | claim interpretation | AFFIRMED | 2/16/2016 |
1137 | galderma | seeking approval to market a generic version of a drug, without more, not evidence of commercial success | 103 | AFFIRMED | 2/15/2016 |
1138 | soverain | broader independent claim can't be nonobvious if dependent claim stemming from it invalid for obviousness | 103 | AFFIRMED | 2/15/2016 |
1139 | bell comm | [A] claim preamble has the import that the claim as a whole suggests for it. | claim interpretation | AFFIRMED | 2/5/2016 |
1140 | corning glass, kropa | complete invention in claim body + preamble only states intended use, not a claim limitation | claim interpretation | AFFIRMED | 2/5/2016 |
1141 | rowe, corning glass | where patentee uses preamble to recite structural limitations, PTO gives effect to that usage. | claim interpretation | AFFIRMED | 2/5/2016 |
1142 | pharmastem | composition obvious if POSITA wld've had reason to attempt to make + reasonable expectation of success | 103 | AFFIRMED | 2/3/2016 |
1143 | motorola | express articulation of what skilled artisan would have known not req'd if evident POSITA would know | 103 | AFFIRMED | 2/1/2016 |
1144 | young, keller | for obviousness one must always weigh evidence as a whole including teaching away or a conflict. | 103 | AFFIRMED | 1/29/2016 |
1145 | arkley | picking and choosing has no place in the making of a 102, anticipation rejection | 102 | REVERSED | 1/28/2016 |
1146 | geisler, malagari | claim rendered prima facie obvious by prior art reference that discloses range that touches range recited in the claim. | 103 | AFFIRMED | 1/27/2016 |
1147 | Geo. M. Martin | Commercial success of a product is relevant only insofar as success is due to claimed invention. | 103 | AFFIRMED | 1/25/2016 |
1148 | huang | Appellant must offer proof sales were a direct result of the unique characteristics of the claimed invention | 103 | AFFIRMED | 1/25/2016 |
1149 | mannesmann | if "consisting of" appears in clause (a), not preamble, it limits only element set forth in clause (a) | claim interpretation | REVERSED | 1/22/2016 |
1150 | miller | claim limitations reciting intended use merely go to the breadth of the claim and not indefiniteness. | 112(2) | REVERSED | 1/21/2016 |
1151 | hotchkiss | classical 103 the knob of clay was simply the substitution of one [known] material for another [wood] | 103 | AFFIRMED | 1/20/2016 |
1152 | boehringer | intended use will not limit scope of claim because does no more than define context in which operates | claim interpretation | AFFIRMED | 1/20/2016 |
1153 | gulack | descriptive material must be functionally related to the substrate, to distinguish invention from prior art | claim interpretation | AFFIRMED | 1/20/2016 |
1154 | fulton | an alternative, is not, by itself, sufficient to demonstrate a teaching away | 103 | AFFIRMED | 1/15/2016 |
1155 | gurley, ricoh, optivus | to teach away POSITA discouraged from following path in ref, or led in divergent direction | 103 | AFFIRMED | 1/15/2016 |
1156 | keller, wood | The test for obviousness is what combined teachings of references would have suggested to POSITA | 103 | AFFIRMED | 1/14/2016 |
1157 | nievelt | Combining the teachings of references does not involve an ability to combine their specific structures. | 103 | AFFIRMED | 1/14/2016 |
1158 | sneed, orthopedic | not necessary that inventions of references be physically combinable to render invention obvious | 103 | AFFIRMED | 1/14/2016 |
1159 | brookhill-wilk | Absent express intent to impart novel meaning to claim term it takes ordinary and customary meaning | claim interpretation | AFFIRMED | 1/13/2016 |
1160 | helmsderfer | patentee may act as own lexicographer but must clearly express that intent in the written description | claim interpretation | AFFIRMED | 1/13/2016 |
1161 | multiform | special meaning for term must be clear in spec so any departure from common usage understood by POSITA | claim interpretation | AFFIRMED | 1/13/2016 |
1162 | belden | 103 - not only if POSITA could have but would have been motivated to make the combinations or modifications | 103 | REVERSED | 1/12/2016 |
1163 | fritch | impermissible to use claimed invention as instruction manual to piece together teachings of the prior art. | 103 | REVERSED | 1/11/2016 |
1164 | fritch | Dependent claims are nonobvious if the independent claims from which they depend are nonobvious | 103 | REVERSED | 1/11/2016 |
1165 | iron grip | if commercial success is license evidence of nexus req, because license cheaper than defending lawsuit | 103 | AFFIRMED | 1/8/2016 |
1166 | ortho pharmaceutical | the claims, not the specification, define an invention and are compared for double patenting | 103 | REVERSED | 1/7/2016 |
1167 | wood | common sense necessary in deciding which fields POSITA would reasonably be expected to look for solution | 103 | REVERSED | 1/6/2016 |
1168 | dunn | Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. | 103 | AFFIRMED | 1/5/2016 |
1169 | sponnoble | combination may be said to teach away where combined teachings produce "seemingly inoperative device" | 103 | AFFIRMED | 1/5/2016 |
1170 | Beckman | POSITA able to read a ref for all that it teaches, not limited to its explicit text preferred embodiment | prior art | AFFIRMED | 1/4/2016 |
1171 | Chapman | ref used for all it realistically teaches, not limited to disclosures in specific illustrative examples. | prior art | AFFIRMED | 1/4/2016 |
1172 | syntex | What ref teaches POSITA not limited to what it specifically 'talks about' or is 'mentioned' or 'written' | prior art | AFFIRMED | 1/4/2016 |
1173 | CIAS | "comprised of" ok as other than "transition phrase," partakes of long-standing recognition as open-ended term | claim interpretation | AFFIRMED | 12/31/2015 |
1174 | sneed | not necessary inventions of references be physically combinable to render obvious invention under review | 103 | AFFIRMED | 12/30/2015 |
1175 | yorkey | The Board has discretion to give one item more weight unless no reasonable trier of fact could have done so | 103 | AFFIRMED | 12/30/2015 |
1176 | plantronics | Where reasoning absent, cannot assume ordinary artisan would be awakened to modify prior art. | 103 | REVERSED | 12/30/2015 |
1177 | seattle box | When word of degree used fact-finder must determine if spec provides standard for measuring degree. | 112(2) | AFFIRMED | 12/28/2015 |
1178 | brown | It is the patentability of the product claimed and not the recited process steps which must be established. | claim interpretation | AFFIRMED | 12/22/2015 |
1179 | williamson | Module' is well-known nonce word that can operate as substitute for 'means' in the context of sec 112(f) | 112(6) | AFFIRMED | 12/21/2015 |
1180 | impax, gleave, novo | enablement for prior art to anticipate under 102 does not require utility, unlike under 112. | 102 | AFFIRMED | 12/18/2015 |
1181 | Nazomi, karlin | Claim differentiation means limitations stated in dependent claims not read into independent claim | claim interpretation | REVERSED | 12/17/2015 |
1182 | gechter | PTO record must include specific fact findings for each contested limitation + satisfactory explanations | appellate procedure | REVERSED | 12/16/2015 |
1183 | Jung | rejection must be set forth in sufficiently articulate informative manner to meet notice requirement of sec 132 | appellate procedure | REVERSED | 12/16/2015 |
1184 | stepan | PTO's obligation to provide prior notice of all matters of fact and law asserted prior to an appeal hearing | appellate procedure | REVERSED | 12/16/2015 |
1185 | greenfield | evidence one or small number of species gives unexpected results inadequate proof of non-obviousness | 103 | AFFIRMED | 12/15/2015 |
1186 | harris | need to show unexpected results covering the scope of the claimed range | 103 | AFFIRMED | 12/15/2015 |
1187 | mouttet | mere disclosure of alternative design does not teach away | 103 | AFFIRMED | 12/14/2015 |
1188 | cable | gross sales figures do not show commercial success absent evidence of market share | 103 | AFFIRMED | 12/11/2015 |
1189 | clemens | objective evidence of non-obviousness must be commensurate in scope with the claims offered to support | 103 | REVERSED | 12/8/2015 |
1190 | sud-chemie | evidence of unexpected results will not necessarily overcome strong prima facie showing of obviousness | 103 | REVERSED | 12/8/2015 |
1191 | net moneyin | 102 prior art must not only disclose all elements of claim, but also 'arranged as in the claim.' | 102 | REVERSED | 12/7/2015 |
1192 | mraz, seid | [A]n accidental disclosure, if clearly made in a drawing, is available as a reference. | prior art | AFFIRMED | 12/3/2015 |
1193 | wagner | drawings can be used as prior art, only if the prior art features are clearly disclosed by the drawing. | prior art | AFFIRMED | 12/3/2015 |
1194 | superguide | particu embodi in writ desc may not be read into claim when claim language broader than the embodiment. | claim interpretation | AFFIRMED | 12/2/2015 |
1195 | KSR | important to identify reason that wld prompt POSITA to combine the elements in way claimed new invention does. | 103 | REVERSED | 12/1/2015 |
1196 | borkowski | must give clear explanation of exhibits used to antedate a reference pointing out what facts established | prior art | REVERSED | 11/30/2015 |
1197 | katz, american academy | if the method claim need not invoke conditional steps they need not be found in prior art | claim interpretation | AFFIRMED | 11/26/2015 |
1198 | constant, nomiya | statement by applicant certain matter is prior art admission matter is prior art for all purposes | prior art | AFFIRMED | 11/25/2015 |
1199 | Phillips | dep. claim that adds particular limitation gives rise to presumption limitation not present in ind. claim | claim interpretation | AFFIRMED | 11/24/2015 |
1200 | sunrace | presump of claim differentiation esp strong when limitation only meaningful diff between ind and dep claim | claim interpretation | AFFIRMED | 11/24/2015 |
1201 | kuhle | design choice when solves no stated problem and presents no novel or unexpected result | 103 | AFFIRMED | 11/23/2015 |
1202 | rice | design choice issue is whether differences result in difference in function or give unexpected results. | 103 | AFFIRMED | 11/23/2015 |
1203 | belden, intouch | obviousness concerns whether POSITA not only cld have made but wld have been motivated to combine | 103 | REVERSED | 11/20/2015 |
1204 | chaganti | not enough to say would have been reason to combine two refs because wld "have been obvious to POSITA." | 103 | REVERSED | 11/20/2015 |
1205 | perfect web | 103 depends on Graham factual findings, but may include recourse to logic, judgement, and common sense | 103 | AFFIRMED | 11/19/2015 |
1206 | bigio | analogous art has two separate tests; same field or reasonably pertinent to same problem | prior art | REVERSED | 11/18/2015 |
1207 | ellis | Structural similarities and functional overlap can show prior art ref reasonably pertinent to invention | prior art | REVERSED | 11/18/2015 |
1208 | DDR Holdings | claim term depending solely on unrestrained, subjective opinion of particular individual indefinite | 112(2) | AFFIRMED | 11/17/2015 |
1209 | ariad | disclosure must reasonably convey to POSITA inventor possessed claimed subject matter as of filing date | 112(1) | AFFIRMED | 11/16/2015 |
1210 | curtis | Whether written description adequately supports claims is an issue of fact. | 112(1) | AFFIRMED | 11/16/2015 |
1211 | giolito | It is immaterial whether similar claims have been allowed to others. | 103 | AFFIRMED | 11/13/2015 |
1212 | gyurik | allowed claims in other apps or patents not considered in reviewing specific rejections of specific claims | 103 | AFFIRMED | 11/13/2015 |
1213 | ICON | the PTO must give claims their broadest reasonable construction consistent with the specification. | claim interpretation | AFFIRMED | 11/11/2015 |
1214 | catalina | novelty of the device used is not dispositive as to the patentability of method claims | claim interpretation | REVERSED | 11/10/2015 |
1215 | K-2, Rowe | functional or use limitations OK if describe structural requirements of device. | claim interpretation | REVERSED | 11/10/2015 |
1216 | catalina | patentability of apparatus claim depends on claimed structure, not use or purpose of that structure. | claim interpretation | AFFIRMED | 11/9/2015 |
1217 | paragon | improper to construe non-functional system claim terms making infringement/validity turn on function | claim interpretation | AFFIRMED | 11/9/2015 |
1218 | roberts | machine inventor entitled to benefit of all uses, no matter whether he conceived idea of the use or not | claim interpretation | AFFIRMED | 11/9/2015 |
1219 | superior industries, hewlett-packard | A system claim generally covers what the system is, not what the system does | claim interpretation | AFFIRMED | 11/9/2015 |
1220 | leggett | well settled that teaching away is irrelevant to anticipation | 102 | AFFIRMED | 11/6/2015 |
1221 | wilder2 | descrip requirement needs descrip of invention, not indication of result one might achieve if one made it | 112(1) | REVERSED | 11/5/2015 |
1222 | minformation, TALtech | ordering of steps req when logic or grammar of claim lang or spec directly or implicitly req | claim interpretation | REVERSED | 11/5/2015 |
1223 | bilstad | disclosure of species may be sufficient written description for later claimed genus including that species | 112(1) | REVERSED | 11/4/2015 |
1224 | tronzo | no written desc support for genus if (1) unpredict in perf (2) spec makes clear only specific species disc | 112(1) | REVERSED | 11/4/2015 |
1225 | circuitcheck | question is whether inventor wld look to this particular art to solve the particular problem at hand. | prior art | AFFIRMED | 11/2/2015 |
1226 | clay | ref reasonably pertinent if logically wld have commended itself to inventor's attention in considering prob | prior art | AFFIRMED | 11/2/2015 |
1227 | spada | Products of identical chemical composition can not have mutually exclusive properties. | 102 | AFFIRMED | 10/30/2015 |
1228 | warner | no speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in factual basis | 103 | REVERSED | 10/29/2015 |
1229 | katz | BRI of a conditional step in a method claim includes instances in which conditional step would not be invoked | claim interpretation | AFFIRMED | 10/28/2015 |
1230 | cortright | claim interpretation not so broad conflicts with meaning given to identical terms in analogous art | claim interpretation | REVERSED | 10/27/2015 |
1231 | skvorecz | BRI during examination doesn't mean legally incorrect interpretation | claim interpretation | REVERSED | 10/27/2015 | <