Obviousness Must Consider Function / Intended Use of Prior Art Device

Attorney: Derek Lightner, Ph.D.
August 2, 2022

On July 22, 2022, the Patent Trial and Appeal Board (PTAB) reversed an examiner’s assertion of obviousness in the case of Ex parte Jaeger (Appeal 2021-002641, USSN 15/559,117). The issue in Jaeger was whether the addition of known element to a prior art device was obvious where the combination was not consistent the purpose / operation of the prior art device.<... Read more

PTAB Overrules Routine Experimentation / Optimization Obviousness Finding

Attorney: Derek Lightner, Ph.D.
May 18, 2022

The Patent Trial and Appeals Board (PTAB) recently overruled an examiner’s finding of obviousness of claims premised on a “missing” moisture permeability feature in a composition designed for moisture absorption.<... Read more

Plural Unreduced Selections with Unpredictable Effect Not Necessarily Routine Optimization

Attorney: Derek Lightner, Ph.D.
March 8, 2022

The PTAB in Ex parte Sturgis (Appeal 2021-002857; USSN 15/696,282) reversed an examiner’s obviousness rejection of claims for failing to sufficiently establish obviousness via routine optimization The reversal was mainly based upon plural selections being claimed without any particular directions on choosing in the prior art and an unpredicted effect based on the cited art.<... Read more

Markush Language Distinguishes over Multi-Component Solvent

Attorney: Derek Lightner, Ph.D.
January 31, 2022

The Patent Trial and Appeal Board (PTAB) overturned the examiner’s obviousness finding in Ex parte PETER KAPITAN and ALEXANDER SAJTOS (Appeal 2021-001272; USSN 14/409,522) substantially on the basis of a recitation of “… the solvent … is an alkane selected from a group consisting of pentane and hexane” distinguishing over the prior art description of the optional use of petroleum ether, with evidence that petroleum ether is not simply pentane or hexane.<... Read more

Supplementing Element 1 with Element 2 Lacking the Claimed Function is not Obvious

Attorney: Derek Lightner, Ph.D.
December 27, 2021

In Ex parte FRANÇOIS ROY, JONATHAN CLOUTIER, and VINCENT TANGUAY (Appeal 2021-000050; USSN 13/966,396), the Patent Trial and Appeals Board (PTAB) recently reversed an examiner’s finding of obviousness in a rather involved rejection based upon four references, which hinged upon the presence of “thermofusable glue droplets providing a mechanical retention force to retain the wood strips in an interconnected spaced-apart relationship.”<... Read more

PTAB Restates That Not All Combinations of Molecular Modifications are Obvious

Attorney: Derek Lightner, Ph.D.
April 26, 2021

In a Patent Trial and Appeal Board (PTAB) decision issued on April 16, 2021, in Ex parte Bhalla, Luthra, Reid I, and Levason (Appeal 2021-001535, USSN 14/373,413), the PTAB was presented with the issue of the obviousness of an imaging agent comprising an 18F-labelled compound of a formula below, with the relevant moieties indicated. The main claim covered a moderate genus of compounds[1], and was rejected over a combination of three references.<... Read more