Saturday, April 27, 2013

Patentee loses appeal of re-exam result in Ex Parte CAREFUSION 303, INC.

The appellant lost in an appeal of a re-examination in Ex Parte CAREFUSION 303, INC.:

Appellant, patent owner CareFusion 303, Inc., appeals under 35
U.S.C. §§ 134(b) and 306 from the final rejection of claims 1-46. We have
jurisdiction under 35 U.S.C. § 6(b)(2).
We affirm.

KSR is cited:

“Section 103(a) forbids issuance of a patent when „the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.”‟ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007) (quoting 35 U.S.C. § 103(a)). “What matters is the objective reach of
the claim. If the claim extends to what is obvious, it is invalid under § 103.”
KSR, 550 U.S. at 419. To be nonobvious, an improvement must be “more
than the predictable use of prior art elements according to their established
functions.” Id. at 417. Further, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court [or the Office] can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418.

Appellant failed on the nexus requirement of secondary considerations:

Thus, to satisfy the
nexus requirement, Appellant should have proffered evidence tailored only
to the advent of a database that includes both hard and soft limits. See, e.g.,
J.T. Eaton & Co., Inc. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571
(Fed. Cir. 1997) (holding “the asserted commercial success of the product
must be due to the merits of the claimed invention beyond what was readily
available in the prior art”). Appellant, by admission, did not.


Appellant has not, in any way, pointed out that a competitor has
copied Patent Owner‟s infusion pump in order to include the hard- and softlimit
features. Further, the mere fact of copying (even when proved) is
insufficient to make the action significant in an obviousness analysis. Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985),
overruled on other grounds by, Midwest Indus., Inc. v. Karavan Trailers,
Inc., 175 F.3d 1356, 1359 (Fed. Cir. 1999) (en banc).


Because we are sustaining the rejection of claims 1-46 over Sweeney
alone, we find it unnecessary to reach the rejection of the same claims over
Sweeney and Ford. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009).


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