Nonobviousness - Pl Patent Exam Prep

Front 1

How do examiners interpret claims during examination?

Back 1

• Broadest reasonable interpretation per MPEP §211,
• Claims language means whatever it means to someone skilled in the art unless defined otherwise,
• Terms interpreted in light of the specification.

Front 2

Guidelines for determining whether preamble is limiting:

Back 2

• Not limiting where the body of the claim includes all structure and preamble only states intended use,
• Limiting when applicable argues it overcomes prior art,
• Jepson claim,
• Where preamble is essential to understand limitations in the body or body refers back to preamble,
• Preamble recites essential structure.

Front 3

What counts are prior art for §103?

Back 3

1) All §102 events,
2) Admissions made by the applicant.

Front 4

What prior art admissions can be overcome?

Back 4

Jepson claims only - by demonstrating that the subject matter in preamble is the inventor's own work.

Front 5

Graham v. John Deere factors:

Back 5

1) Determine the scope and content of the prior art,
2) Ascertain the difference between the prior art and the claims,
3) Level of skill in the art,
4) Secondary considerations i.e., objective indicia of nonobviousness.

Front 6

What are the secondary considerations of nonobviousness?

Back 6

a) Commercial success,
b) Long felt but resolved need,
c) Recognition of problem solved,
d) Failure of others to solve the problem,
e) Competitor's prompt copying,
f) Licensing of patent to industry,
g) Teaching away of prior art,
h) Unexpected results,
i) Disbelief and incredulity of others.

Front 7

What may be applicant do to challenge an examiner's assertion of "common knowledge"?

Back 7

• Ask for a reference to support that MPEP §2144.03,
• If examiner claims it is their own knowledge, ask for an affidavit from the examiner.

Front 8

Who bears the initial burden of supporting any prima facie conclusion of obviousness?

Back 8

Examiner; if examiner fails applicant is under no obligation to submit evidence of nonobviousness.

Front 9

When is a prima facie case of obviousness established?

Back 9

When it appears that the teachings of the prior art relied upon by the examiner are sufficient for skilled persons to make the invention.

Front 10

3 requirements to establish prima facie obviousness under MPEP §2143:

Back 10

a) Suggestion or motivation either in the prior art or knowledge generally available,
b) Reasonable expectation of success,
c) Prior art must teach or suggest all the claim limitations.

Front 11

Principles of motivation to modify or combine under MPEP §2143.01:

Back 11

• Mere fact references that can be combined does not establish motivation,
• The capability of a skilled person to combine does not establish motivation,
• Can't destroy the intended function of the prior art,
• Can't change the principle of operation,
• Prima facie obviousness cannot be established by combinations teaching away,
• Applicant's discovery of the problem may overcome prima facie obviousness.

Front 12

Elements of reasonable expectation of success under MPEP §2143.02:

Back 12

a) "Reasonable" not absolute,
b) Predictability is evaluated as of the time the invention was made.

Front 13

A process is patentable under §103(a) when:

Back 13

The material used or end product of the process is patentable.

Front 14

Circumstances supporting a prima facie obviousness rejection under MPEP §2144.04:

Back 14

Claimed invention differs from the prior art only in:
1) Omitting an element and its function,
2) Changing the size, shape, or sequence of adding ingredients,
3) Making portable, integral, separable, adjustable, or continuous,
4) Reversing, duplicating, or rearranging parts.

Front 15

What is necessary in rebutting a prima facie obviousness rejection with secondary indicia of nonobviousness?

Back 15

A factual showing is necessary (e.g. by way of a Rule 1.132 affidavit or declaration, or information set forth in the specification).

Front 16

What must "commercial success" evidence establish to be probative of nonobviousness?

Back 16

A connection/nexus between success and the claimed invention.

Front 17

May increased market share establish "commercial success"?

Back 17

Yes, it is stronger evidence than increased sales if there was not an increase in marketing.