Sunday, July 29, 2007

The boilerplate for obviousness at the BPAI post-KSR

In a post titled Chilling Invention at the PTO, patenthawk gives boilerplate language for a post-KSR obviousness rejection at the BPAI.

Language includes:

However, “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id.


Where, as here, art is silent on the capabilities or function of any particular item, that is not teaching away from its use. Further, the Court in KSR noted that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 127 S.Ct. at 1742, 82 USPQ2d at 1397.


As noted by KSR:

Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.

KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397.

Hal Wegner is mentioned:

Kubin is highly significant in two critical areas of biotechnology patent law. The opinion –

(a) repudiates Deuel, keyed to language taken from the Supreme Court KSR decision as well as the Federal Circuit Kahn opinion that preceded KSR; and

(b) adopts the controversial Enzo line of “written description” biotechnology case law as the position of the PTO Board (p. 15).


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