Obviousness

Traversing a Design Choice Rationale Asserted in an Obviousness Rejection

Design Choice is a type of rationale utilized within the context of an obviousness rejection (35 USC 103).  This article discusses a recent BPAI decision which articulates a rigorous factual standard for establishing a design choice rejection.   Ex parte Gunasekar – Recent BPAI Decision The BPAI in Ex parte Gunasekar, a somewhat recent decision [...]

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Teaching Away | Obviousness

“Teaching away” is one of the most persuasive arguments an Applicant may further during patent prosecution to traverse an obviousness rejection (35 USC 103).  To successfully implement a teaching away argument, a number of items should be considered to determine whether a prior art reference would indeed teach away from the claimed invention.   Background [...]

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Obviousness Arguments to Avoid During Patent Prosecution

The following list of items was compiled after reviewing a number of Board of Patent Appeals and Interferences (BPAI) decisions in which the Board found the Applicant’s obviousness arguments unpersuasive.  It should be noted that an article published previously on this blog provides an in-depth examination of obviousness rejections    Single Reference Traversal When an [...]

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USPTO KSR Guidelines

Developments in the Obviousness Inquiry After KSR v. Teleflex (35 USC 103) The USPTO  released updated KSR guidelines (August 2010) to provide USPTO personnel (and patent practitioners) with additional guidance regarding obviousness (35 USC 103) inquiries by examining post-KSR U.S. Court of Appeals for the Federal Circuit (CAFC) decisions. The 2010 KSR Guidelines reference six [...]

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Obviousness Rejection

This article provides a framework for traversing an obviousness rejection(s) during the patent prosecution phase of a patent application and highlights the 2010 USPTO KSR Guidelines. Background | Supreme Court Jurisprudence | Graham | KSR Obviousness is defined by statute (35 USC 103(a)) as follows: “A patent may not be obtained though the invention is [...]

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