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Law Outlines Patent Law Outlines

Obviousness §103 Outline

Updated Obviousness §103 Notes

Patent Law Outlines

Patent Law

Approximately 33 pages

Typical US Patent Law outline, contains a checklist of key issues to spot (patentability requirements, infringement, defenses, and so forth), as well as details on key cases and provisions of the patent law about all the main patent law topics. Course also emphasized policy rationales underlying patent law, which is interspersed throughout....

The following is a more accessible plain text extract of the PDF sample above, taken from our Patent Law Outlines. Due to the challenges of extracting text from PDFs, it will have odd formatting:

§103 Obviousness

  1. Section 103: Obviousness

    1. ORDER OF ANALYSIS

      1. Determine scope of prior art

      2. Apply In re Clay

      3. Apply Graham factors

        1. Scope and content of the prior art

        2. The difference between PA and the claimed invention

          1. This is the new important part: How do they differ.

          2. If a piece of PA has ALL of the pieces in it, it’s novelty not obviousness. (102)

          3. 103: Here’s the different pieces of prior art, how they are similar/differ.

        3. The level of ordinary skill in the art

          1. Hard to really know what this means; but have to do it. Make something up. (Won’t be relevant in the test because you won’t really know.)

        4. THEN, would POSA think it obvious?

          1. The first 3steps FRAME the inquiry.

          2. Is the combination of PA1 and PA2 obvious?

            1. Pick a starting point (“A”); is it obvious to pick that starting point?

              1. Prior Art “A” has X but not Y or Z.

              2. Prior art B Has Y; and C has Z.

      4. Go through TSM

        1. Actually in the prior art; level of ordinary skill; nature of the problem to be solved; solving a similar problem; using one element to solve a similar problem

      5. Go through reasonable expectation of success (for some complicated fields, particularly Biotech)

        1. Was there a reasonable expectation that the invention would form and have its useful properties when R&D project was initiated?

      6. Go through secondary factors if prima facie obvious (OR GENUS/SPECIES PATENT)

        1. Unexpected results (And the boundary you draw is important)

          1. ** Esp. for Pharma

        2. Commercial success (Nexus Requirement)

        3. Long-felt, unresolved needs

        4. Failure of others

        5. Simultaneous invention by others

        6. Prior art teaches away from the claimed language

        7. Copying of claimed language by others

        8. "etc."

      7. Something about falling within / overlapping ranges.

History

  • Graham v. John Deere

    • Invention: Shock-absorbing plow.

Prima Facie Case

  • In re Dembiczak (Fed Cir 1999)

    • Examiner must make findings as to which teachings, suggestions, or motivations (TSM) would have led anyone to combine the prior art to arrive at a conclusion of obviousness

    • The nature of the problem to be solved given the ordinary level of skill of one in the art can also suggest the combination of references

    • What problem are you solving?” is one of the core questions of the obviousness analysis, though buried in state doctrine; framing of this question is likely dispositive.

  • KSR International v. Teleflex (U.S. 2007)

    • TSM shouldn’t be so “rigidly” applied such that we’re “look[ing] only to the problem the patentee was trying to solve”

      • Should look beyond what’s claimed in the invention

      • Work shouldn’t be totally predictable

    • Let’s go back to and stick with Graham (obvious-to-try) (but ignore this on the exam)

  • Kubin (Fed Cir 2009)

    • Maybe obvious-to-try is a thing again (again don’t try this on the exam)

  • Pfizer v. Apotex (Fed Cir 2007)

    • Routine Experimentation still requires “reasonable expectation of success.”

    • Reasonable expectation of success required before claims may be rejected for prima facie obviousness; thus “no...

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