The Doctrine of Inherency in the Context of an Obviousness Analysis

Author: Alec C. Dorn
March 13, 2026

Ex parte Liu (PTAB December 17, 2025) (Appeal No. Appeal 2025-002084, in Application Serial No. 16/765,024) (before Yang, Boudreau, and Hardman, APJ) (opinion by Boudreau, APJ)<... Read more

Federal Circuit Refuses to Construe "Configured For" as More Than "Capable Of"

Author: Yan Cong, Ph.D.
March 12, 2026

In In re Blue Buffalo Enterprises, Inc., No. 2024-1611 (Fed. Cir. Jan. 14, 2026), the Federal Circuit affirmed the PTAB’s decision affirming the Examiner’s obviousness rejection after rejecting Blue Buffalo’s narrow construction of the claim term “configured for”.<... Read more

Reversal of an Obviousness-Inherency Position

Author: Derek Lightner, Ph.D.
December 19, 2025

An obviousness rejection was recently reversed by the Patent Trial and Appeal Board (PTAB) by the panel of Administrative Patent Judges (APJs) authored by Debra L. Dennett, and further including Jeffrey W. Abraham and Avelyn M. Ross in U.S. Appl. No. 17/395,422 (the 422 Application). The PTAB reversed the obviousness finding of examiner Justin Fischer, supported by Supervisory Patent Examiner (SPE) Katelyn W. Smith, and Quality Assurance Specialist (TQAS) Colleen P. Dunn, on the alleged obviousness of the claims over a combination of three to five references, three of which were the applicant-appellant’s own prior art. The main claim on appeal recited<... Read more

Different Mechanism Leads to Lack of Reasonable Expectation of Success

Author: Derek Lightner, Ph.D.
September 23, 2025

The Patent Trial and Appeal Board recently reversed an obviousness finding of (at least initially non-signatory) Examiner Audrey Buttice, supported by Supervisory Patent Examienr (SPE) Joanne Hama and Office of Patent Quality Assurance (OPQA) official, Jeffrey Siew, for a method of treating a drug-resistant cancer type with an antibody-drug conjugate (ADC) in Ex part Yonesaka, et al., Appl. No. 16/485,777 (Appeal 2024-003040; Technology Center 1600).<... Read more

Appeal of Examiner's Final Rejection of Claims 18-20 Reversed by PTAB

Author: Diane Jones
August 4, 2025

Appeal of Examiner’s Final Rejection of claims 18-20 reversed by PTAB based on calculation of an effective human dosage from a “minimal risk of toxicity” dosage for a Cebus monkey rather than a calculation of “minimum pharmacologic activity in humans.”<... Read more

Eye Therapies, LLC. v. Slayback Pharma, LLC: How Prosecution History Can Alter Phrase Interpretation

Author: David Inglefield
July 23, 2025

On June 30, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision regarding transitional phrase claim construction, reversing the decision of the Patent Trial and Appeal Board (PTAB) in Eye Therapies, LLC. v. Slayback Pharma, LLC. The PTAB had previously ruled the claims of U.S. Patent No. 8,293,742 (the ‘742 patent) unpatentable as obvious in a inter partes review brought by Slayback. During the inter partes review, the parties had disagreed on the construction of the transitional phrase “consisting essentially of” in the ‘742 patent. The Court found that the Board had incorrectly applied the conventional open construction of the transitional phrase, which was at odds with the prosecution record. This demonstrates how prosecution history can alter a phrase’s typical meaning.<... Read more

Impermissible Hindsight Leads to Reversal of Obviousness Finding

Author: Derek Lightner, Ph.D.
April 24, 2025

In the appeal of USSN 17/963,407 (Appeal 2025-001881) to the Patent Trial and Appeal Board (PTAB), a finding of obviousness by Primary Examiner Drew Becker, supported by Supervisory Patent Examiner (SPE) Erik Kashnikow and Review Quality Assurance Specialist (RQAS) Jennifer McNeil from the Office of Patent Quality Assurance (OPQA), was reversed by the PTAB for the improper reliance on hindsight. The decision can be found at https://patentcenter.uspto.gov/applications/17963407/ifw/docs?application=.<... Read more

Federal Circuit Reverses District Court's Invalidity Ruling on Written Description in Novartis v. Torrent

Author: Xiaohua (Joyce) Guo, Ph.D.
February 18, 2025

In a precedential opinion issued on January 10, 2025, the United States Court of Appeals for the Federal Circuit reversed a district court’s ruling that had invalidated claims 1-4 of U.S. Patent No. 8,101,659 (“the ’659 patent”) for lack of written description.<... Read more

PTAB Reverses Examiner Based on "Or" Language

Author: Diane Jones
February 14, 2025

Re: US2016/0331260A1 “Asystole detection for cardiopulmonary resuscitation”, Applicant Koninklijke Philips N.V.<... Read more

A Transformation of Matter Helps Secure Subject Matter Eligibility at the PTAB

Author: Derek Lightner, Ph.D.
December 30, 2024

In the matter Ex parte MICHAEL J. WEST, in Technology Center 1700 (USSN 16/078,845; Appeal 2023-003903) rejections for an alleged lack of patentable subject matter, a lack of enablement, indefiniteness, and obviousness by a primary examiner, Lore Jarrett, were reversed by a panel of the Patent Trial and Appeal Board (PTAB) made up of Jeffrey R. Snay, Whitney Wilson, and Jane E. Inglese. The first appealed claim recited (with the underlined portions added after the first rejection): <... Read more