Patentable vs Non-Patentable

Question 1

PATENTABLE or NON-PATENTABLE?

a washing machine comprising a tub, a drive motor operatively connected to the tub, a controller for controlling the drive motor, and a housing for containing the tub, drive motor, and controller

Answer 1

Patentable

Question 2

PATENTABLE or NON-PATENTABLE?

a printer comprising a belt, a roller, a printhead and at least one ink cartridge

Answer 2

Patentable

Question 3

PATENTABLE or NON-PATENTABLE?

an earring comprising a sensor for taking periodic blood glucose measurements and a memory for storing measurement data from the sensor

Answer 3

Patentable

Question 4

PATENTABLE or NON-PATENTABLE?

a method for sequencing BRCA1 gene sequences comprising: amplifying by a polymerization chain reaction technique all or part of a BRCA1 gene from a tissue sample from a human subject using a set of primers to produce amplified nucleic acids; and sequencing the amplified nucleic acids

Answer 4

Patentable

Question 5

PATENTABLE or NON-PATENTABLE?

a method for loading BIOS into a local computer system which has a system processor and volatile memory and non-volatile memory, the method comprising the steps of: responding to powering up of the local computer system by requesting from a memory location remote from the local computer system the transfer to and storage in the volatile memory of the local computer system of BIOS configured for effective use of the local computer system, transferring and storing such BIOS, and transferring control of the local computer system to such BIOS

Answer 5

Patentable

Question 6

PATENTABLE or NON-PATENTABLE?

a method of rearranging icons on a graphical user interface (GUI) comprising the steps of:
receiving a user selection to organize each icon based on the amount of use of each icon, determining the amount of use of each icon by using a processor to track the amount of memory allocated to the application associated with the icon over a period of time, and automatically moving the most used icons to a position in the GUI closest to the start icon of the computer system based on the determined amount of use

Answer 6

Patentable

Question 7

PATENTABLE or NON-PATENTABLE?

a method of training a neural network for facial detection comprising: collecting a set of digital facial images, applying one or more transformations to the digital images, creating a first training set including the modified set of digital facial images; training the neural network in a first stage using the first training set, creating a second training set including digital non-facial images that are incorrectly detected as facial images in the first stage of training; and training the neural network in a second stage using the second training set

Answer 7

Patentable

Question 8

PATENTABLE or NON-PATENTABLE?

A newly discovered principle

Answer 8

NOT Patentable

Question 9

PATENTABLE or NON-PATENTABLE?

Qualities of certain bacteria

Answer 9

NOT Patentable

Question 10

PATENTABLE or NON-PATENTABLE?

Isolated DNA

Answer 10

NOT Patentable

Myriad case. (SC decision) BUT- cDNA (manmade) IS patent eligible as long as not identical to DNA

Question 11

PATENTABLE or NON-PATENTABLE?

New mineral discovered in the earth

Answer 11

NOT Patentable

Question 12

PATENTABLE or NON-PATENTABLE?

New plant found in the wild

Answer 12

NOT Patentable

Question 13

PATENTABLE or NON-PATENTABLE?

Embryos and fetuses

Answer 13

NOT Patentable

Question 14

PATENTABLE or NON-PATENTABLE?

“Dolly the sheep”

Answer 14

NOT Patentable

NOTE: Jurasic Park dinos would have been patent eligible because they depended on lycine)

Question 15

PATENTABLE or NON-PATENTABLE?

Auto-electronic- mechanism for clearing a transaction between 2 parties that otherwise don’t know each other. 3rd party they both trusted. Rely on the 3rd party to clear the transaction (like escrow).

Answer 15

NOT Patentable

Question 16

PATENTABLE or NON-PATENTABLE?

Steps to hedge risk in investments, claimed as a mathematical formula

Answer 16

NOT Patentable

Question 17

PATENTABLE or NON-PATENTABLE?

a strategy for reducing, avoiding, or deferring tax liability

Answer 17

NOT Patentable

UNLESS- it is method, apparatus, technology, computer program or system either:
Used solely for preparing a tax filing, including one that records/transmits, or organizes data related to such a filing
Used solely for financial management (to the extent that it is severable from any tax strategy or doesn’t limit the use of any tax strategy)

Question 18

PATENTABLE or NON-PATENTABLE?

PAVING MACHINE:
Combined several well-known elements on a single chassis
A radiant heat burner attached to side to prevent cold joints during continuous strip paving

Prior Art:
Standard paving machines: Typically combined equipment for spreading & shaping asphalt on a single chassis
All component parts of claimed invention
Used radiant heat for softening the asphalt to make patches, but NOT to achieve continuous strip paving

Answer 18

NOT Patentable

Combination of >2 PA elements according to known methods → predictable results

“[t]he convenience of putting the burner together with the other elements in one machine, though perhaps a matter of great convenience, did not produce a ‘new’ or ‘different function’”
Said use of old elements in combo would have been obvious to OS

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396U.S. 57, 163 USPQ 673 (1969)

Question 19

PATENTABLE or NON-PATENTABLE?

System which employs a…
screw anchor for underpinning existing building foundations &
Metal bracket to transfer the building load onto the screw anchor

PRIOR ART:
Fuller – Used a…
screw anchors for underpinning existing foundations
Concrete haunch to transfer the load of the foundation to the screw anchor
Gregory – use a metal bracket

Answer 19

NOT Patentable

Combination of >2 PA elements according to known methods → predictable results

Nature of problem to be solved:
underpinning unstable foundations
Need to connect the member to the foundation to accomplish goal
Problem would have led OS to choose an appropriate load-bearing member and a compatible attachment, therefore…
Obvious to OS use a metal bracket (Gregory) in combo w/ a screw anchor (Fuller) to underpin unstable foundations

Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686(Fed. Cir. 2004)

Question 20

PATENTABLE or NON-PATENTABLE?

Applying entericcoatings to a drug (omeprazole/Prilosec) in pill form for purpose of ensuring the drug didn’t disintegrate before reaching its intended site of action
Claimed formulation-2 layers of coating over the active ingredient

Prior Art:
Coating
Intervening subcoatings purpose-prior art coating was degrading the API-t1/2 was decreased

Answer 20

PATENTABLE

Combination of >2 PA elements according to known methods → predictable results

Degradation of omeprazole by interaction w/ prior art coating had not been recognized in the PA
District Court-based on available evidence, OS would have no reason to include a subcoating
Fed Circuit- affirmed. Even though…
subcoatings for enteric formulation were known, and
there was no evidence of undue technical hurdles lack of reasonable expectation of success
Formulation was nevertheless NOT obvious because flaws in the prior art formulation that prompted the modification hadn’t been recognized…so no reason to modify (even though modification could have been done)

Inventors were the only ones who knew the disintegration of the drug was a problem. Was it obvious to fix the degradation with the coatings? No, because how could it be obvious to fix this problem if you didn’t know the problem existed?

re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008) (AZ vs generics)

Question 21

PATENTABLE or NON-PATENTABLE?

Foam footwear in which a …
one-piece molded foam base section formed the top of the shoe (the upper) and the sole
Strap made of foam attached to the foot opening of the upper, such that strap could provide support to Achilles portion of foot
Strap attached via connectors-allowed it to be in contact with base section, & to pivot relative to the base
Because strap and base were both foam-friction kept strap in place after pivoting (didn’t slip w/ gravity)

Prior Art:
Aguerre – Taught that friction between the base section and the strap was a problem rather than an advantage, and had suggested the use of nylon washers to reduce friction

Answer 21

PATENTABLE

Combination of >2 PA elements according to known methods → predictable results

Fed. Circuit- Nonobvious over a combo of prior art references
Even if all elements of the claimed invention had been taught by the prior art, the claims would not have been obvious because the combination yielded more than predictable results.
“Teaching away!”- must say it won’t work and you make it work

Crocs, Inc. v. U.S. International Trade Commission, 598 F.3d 1294 (Fed.Cir. 2010)

U.S. Patent No.6,993,858

Question 22

PATENTABLE or NON-PATENTABLE?

A segmented & mechanized cover for trucks, swimming pools or other structures

Prio Art:
#1- Taught that reason for making a segmented cover was ease of repair» a single damaged segment could be easily removed & replaced when needed
2nd – Taught the advantages of a mechanized cover for ease of opening

Answer 22

NOT Patentable

Combination of >2 PA elements according to known methods → predictable results

Claim was found obvious over the PA applied
Fed. Circuit-
the segmented aspect of 1st reference & mechanized fn of 2nd perform in the same way after combo than they had before
OS would have expected that adding replaceable segments (from 1st) to the mechanized cover (of 2nd) would result in a cover that maintained the advantagous properties of both PA
NOTE: proper rejection based on combo if OS reasonably expected elements to retain respective properties/functions are combined

Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008

Question 23

PATENTABLE or NON-PATENTABLE?

Ecolab: Method of treating meat to reduce incidence of pathogens by…
Spraying meat w/ antibacterial solution under specified conditions

Prior Art:
Single PA reference- taught all of the elements of claimed EXCEPT for pressure limitation of at least 50 psi
Another-advantages of spray-treating at pressures of 20-150 psi when treating meat w/ antibacterial agent

Answer 23

NOT Patentable

Combination of >2 PA elements according to known methods → predictable results

FMC argued at district court that claimed was obvious in view of that PA plus teaching from 2nd
Fed Circuit: “apparent reason to combine these known elements…to increase contact…OS would have recognized reason for applying solution w/ high pressure…INVALID as Obvious

Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed Cir. 2009)

Question 24

PATENTABLE or NON-PATENTABLE?

Weyers: Barbell-shaped hitch pin locks used to secure trailers
Two different sets of claims- both improvements over PA hitch-pin locks
Removable sleeve that could be placed over the shank of the hitch-pin lock so that the same lock can be used with towing apertures of varying sizes
External flat flange seal adapted to protect the internal lock mechanism from contaminants

Prior Art:
- Weyers admitted that each of several PA references taught every element EXCEPT for removable sleeve and external covering
- Reference teaching Sleeve improvement- dealt specifically w/ using a vehicle to tow a trailer
- Reference teaching sealing improvement-padlock

Answer 24

NOT Patentable

Combination of >2 PA elements according to known methods → predictable results

Master Lock: Argued these PA in combo with additional references teaching the missing elements, would have rendered claims obvious
Court-1st considered: Are additional references relied on by Master Lock analogous PA?
Reference teaching Sleeve improvement- dealt specifically w/ using a vehicle to tow a trailer, so same field
Reference teaching sealing improvement-padlock rather than lock for tow hitch. Court-the spec characterized invention as field of locking devices. Also cited KSR- “directs [it] to construe scope of analogous art broadly”
Fed. Circuit: ruled Master Lock’s ref PA were analogous & therefore relevant
Ruled Obvious- Constituent elements were being employed w/ their recognized functions and would have predictably retained their respective functions when combined.

Wyers v. Master Lock Co., 616 F.3d 1231 (Fed. Cir. 2010)

Question 25

PATENTABLE or NON-PATENTABLE?

Polyaxial pedicule screw used in spinal surgery
Included compression member for pressing screw head into receiving member

Prior Art:
- Puno-all elements of claim except compression member
screw head separated for shock absorber effect, allowing some motion bet. Receiving member & vertibrae
- Anderson – external fracture immobilization splint for large bones w/ swivel clamp….secured by a compression member

Answer 25

PATENTABLE

Combination of >2 PA elements according to known methods → predictable results

Assertion: OS would recognize that adding Anderson’s compression member to Puno’s device…the claim
Was successfully argued that Puno “teaches away” from rigid screw (Puno warned rigidity increases failure rate..rendering device inoperable)
Didn’t merely express general preference for screw w/ shock absorber, but expressed concern for failure
OS would have been deterred from combining based on teachings from Puno and Anderson
Secondary Consideration evaluated by Fed. Circuit: Both supported that combo wasn’t obvious
Failure by others & Copying

DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314(Fed. Cir. 2009)

Question 26

PATENTABLE or NON-PATENTABLE?

Method for decaffeinating coffee or tea
Applicant (Fout) substituted an evaporative distillation step for the aqueous distraction of Pagliaro

Prior Art:
- Pagliaro – Produced a decaffeinated vegetable material & trapped the caffeine in a fatty material (such as oil)
Caffeine was then removed from the fatty material by an aqueous extraction process
- Waterman – suspended coffee in oil and then directly distilled the caffeine through the oil

Answer 26

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Court found that ““[b]ecause both Pagliaro and Waterman teach a method for separating caffeine from oil, it would have been prima facie obvious to substitute one method for the other. Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” Id. at 301, 213 USPQ at 536

In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)

Question 27

PATENTABLE or NON-PATENTABLE?

Method for synthesizing a protein in a transformed bacterial host species by substituting a heterologous gene for a native gene to the host species

Prior Art:
- Protein synthesis in vivo: DNA to RNA to protein
- Polisky article- authored by 2/3 inventors of app
- Explicitly suggested employing method described for synthesis
-The inserted heterologous gene in the article was one that normally did not proceed all the way to the protein production step, but instead terminated with the RNA
- Bahl: General method of inserting chemically synthesized DNA into a plasmid

Answer 27

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Would have been obvious to OS to replace the prior art gene w/ another gene known to lead to protein production, because OS would have been able to carry out such a substitution, and the results were reasonably predictable.
“Obviousness does not require absolute predictability of success.” Id. at 903, 7USPQ2d at 1681.

In re O’Farrell, 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988)

Question 28

PATENTABLE or NON-PATENTABLE?

System which employs a…
screw anchor for underpinning existing building foundations &
Metal bracket to transfer the building load onto the screw anchor

Prior Art:
Fuller – Used a…
screw anchors for underpinning existing foundations
Concrete haunch to transfer the load of the foundation to the screw anchor
Gregory – use a metal bracket

Answer 28

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Nature of problem to be solved: underpinning unstable foundations; Need to connect the member to the foundation to accomplish goal
Problem would have led OS to choose an appropriate load-bearing member and a compatible attachment, therefore…
Obvious to OS use a metal bracket (Gregory) in combo w/ a screw anchor (Fuller) to underpin unstable foundations

Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686(Fed. Cir. 2004)
Case also listed in in Subsection A
Example 2

Question 29

PATENTABLE or NON-PATENTABLE?

Pocket insert for a bound book made by gluing a base sheet and a pocket sheet of paper together to form a continuous 2-ply seam defining a closed pocket

Prior Art:
Wyant – at least 1 pocket formed by folding a single sheet and securing the folder portions along the inside margins using any convenient bonding method
Did NOT disclose bonding the sheets to form a continuous 2-ply seam
Dick – disclosed a pocket that is made by stitching or otherwise securing two sheets along 3 of its 4 edges to define a closed pocket w/ an opening along its 4th edge

Answer 29

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Board found that…
Each of claimed elements … within the scope & content of PA
OS could have combined elements as claimed by methods known at the time of the invention
OS would have recognized at the time invention was made that the capabilities or functions of the combo were predictable
Citing KSR: “substitution of the continuous, two-ply seam of Dick for the folded seam of Wyant thus is no more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for improvement.”

Ex Parte Smith, 83 USPQ2d 1509 (Bd. Pat. App. & Int. 2007

Question 30

PATENTABLE or NON-PATENTABLE?

Treadmill with a folding tread base that swivels into upright storage position

Prior Art:
Damark – an advertisement for folding treadmill demonstrating all the claim elements other than the gas spring
Teague – Patent with a gas spring.
Directed to a bed (Murphy bed) that folds into a cabinet using a novel dual-action spring that reverses force as the mechanism passes a neutral position (rather than a single-action spring that would provide force pushing the bed closed at all times)
Dual-action spring reduced force required to open the bed from closed position, while reducing the force required to lift the bed from open position

Answer 30

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

NOTE: useful example for understanding the scope of analogous art-…view the art in light of the prior art teachings concerning the problem to be solved

On reexamination- Examiner rejected 103 based on a combo of references including Damark and Teague
Federal Circuit- addressed propriety of making the combo since Teague comes from a different field than the invention
Teague was found to be reasonably pertinent to the problem addressed in app because folding mechanism didn’t require any particular focus on treadmills, but rather generally addressed problems supporting the weight of such a mechanism and providing a stable resting position

In re ICON Health & Fitness, Inc. 496 F.3d 1374 (Fed. Cir. 2007)

Question 31

PATENTABLE or NON-PATENTABLE?

Stationary pest control device for electrocution of pests (such as rats/gophers) in which the device is set in an area where pest is likely to encounter it
Employed a resistive electrical switch

Prior Art:
A stationary pest control device PA:
Mechanical pressure switch (only difference w/ new app)
Two PA patents:
Resistive electrical switch, in the contexts of a hand-held pest control device
Same, but in a cattle prod (different field)

Answer 31

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Fed. Circuit- the claims simply substitute a resistive electrical switch for the function of …well known and predictable that it could be used for pest control. Also, the problem solved using the resistive electrical circuit also pertained to PA device.
“a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results.”
Also- analogous art is not limited to the field of applicant’s endeavor

NOTE: Cattle prod is not really the proper use here, because the rat trap was to kill and the cattle prod was not, so should be improper use (different purpose), but the Examiner could have used other prior art such as electric chair to still call it obvious

Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337 (Fed. Cir. 2008)

Question 32

PATENTABLE or NON-PATENTABLE?

Method for auctioning municipal bonds over the Internet- using a conventional Web browser
Could offer package..varying amounts…maturity dates…buyer submit bid (w/ price & interest rate per maturity date)
Buyer could also bid on portion of offering
Claimed invention-consider all parameters to determine best bid

Prior Art:
Only difference: Didn’t use the conventional web browser

Answer 32

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Fed. Circuit -Analogized this case to Leapfrog Case*, which involved a determination of obviousness based on application of modern electronics to a PA mechanical children’s learning device
In Leapfrog-court noted market pressures would have prompted OS to use modern electronics in PA device
In this case-market pressure would have prompted OS to use a conventional Web browser in a method of auctioning municipal bonds

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed.Cir. 2008)

Question 33

PATENTABLE or NON-PATENTABLE?
5(S)-isomer of BP drug ramipril and to compositions and methods requiring 5-(S)
NOTE: 5 stereocenters-all (S)

Prior Art:
Mix of various isomers including 5(S)
Presence of multiple (S) stereocenters in drugs similar to ramipril were known to be associated with enhanced therapeutic efficacy
Ex.: SSS enalapril (all stereo are S) was 700x more potent than SSR enalapril
Also, evidence to indicate conventional methods could be used to separate ramiril isomers

Answer 33

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Question before court -whether purified single isomer would have been obvious over known mix
District Court - Saw it as a close case, as no clear motivation in PA to isolate (S)-ramipiril
Fed. Circuit – disagreed. Said that “Requiring an explicit teaching to purify the 5(S) stereoisomer from a mixture in which it is the active ingredient is precisely the sort of rigid application of the TSM [Ed.: Teaching /suggestion/ motivation] test that was criticized in KSR.”
Also, relied on settle principle: In chemical cases, structural similarity can provide the necessary reason to modify prior art teachings
Requisite motivation can come from any # of sources-need not be explicit
Addressed kind of teaching that would be sufficient (in absence of explicit teaching)- an expectation of similar properties in light of prior art can be sufficient
“Lead compounds”-important subgroup of obviousness cases based on substitution

Simple Substitution of One (Known Element for Another→ predictable results)

Question 34

PATENTABLE or NON-PATENTABLE?

Risedronate- API of P&G’s osteoporosis drug Actonel®
Note: a bisphosphonate- in class of cmpds know to inhibit bone resportion

Prior Art:
Didn’t teach risedronate, but 36 similar cmpds including 2-pyr EHDP, that were potentially useful wrt osteoporosis

Answer 34

PATENTABLE

Simple Substitution of One (Known Element for Another→ predictable results)

Teva – argued obviousness on basis of structural similarity to 2-pyr EHDP, which is a positional isomer of risedronate
Court – found no reason to select 2-pyr EHDP as a lead cmpd in light of unpredictable nature of the art & no reason to modify it so as to obtain risedronate. Also, unexpected results (potency & tox) Teva had not made a prima facie case, and if it is had, was rebutted by evidence of unexpected results
Fed. Circuit – Affirmed. If 2-pyr EHDP is presumed an appropriate lead cmpd, there must be both a reason to modify it so as to make risedronate and a reasonable expectation of success.
No evidence modification were routine so no reasonable expectation of success
Properties of risedronate were not expected
Researchers did not predict either potency or low effective dose
Superior properties were unexpected and could not be predicted
Testing of risedronate cf PA cmpd-outperformed by substantial margin Unexpected superiority

Question 35

PATENTABLE or NON-PATENTABLE?

Pantoprazole-active ingredient in Altana’s antiulcer drug Protonix©
Belongs to PPI inhibitor class
18 cmpds disclosed in patent

Prior Art:
PPI inhibitors were known to treat gastric disorders in the stomach
Altana – 18 cmpds disclosed in a patent, including cmpd 12, which is structurally similar to pantoprazole
Patent claimed cmpds were improvement over prior art
12 disclosed as one of the more potent

Answer 35

NOT Patentable

Simple Substitution of One (Known Element for Another→ predictable results)

Examiner considered cmpds of Altana’s PA to be relevant during prosecution of the patent in suit
Experts had opined that OS would have selected 12 to pursue further investigation as PPI inhibitors

Altana Pharma AG v. Teva Pharmaceuticals USA, Inc., 566 F.3d 999 (Fed. Cir. 2009)

Question 36

PATENTABLE or NON-PATENTABLE?

Suggestion in PA to formulate a cmpd having certain structurally defined moieties or moieties with certain properties

Answer 36

Simple Substitution of One (Known Element for Another→ predictable results)

Prima facie case of obviousness of the claimed compound might exist if…
OS would have known how to synthesize such a cmpd, and
The structural and/or functional result could reasonably have been predicted

Question 37

PATENTABLE or NON-PATENTABLE?

Claimed cmpd: two known cmpds attached via chemical linker

Answer 37

Simple Substitution of One (Known Element for Another→ predictable results)

Might be properly found to have been obvious if…
There would have been a reason to link the two
If OS would have known how to link
If resulting cmpd would have been the predictable result of the linkage procedure

Question 38

PATENTABLE or NON-PATENTABLE?

a “means by which the self-oscillating inverter in a power-line-operated inverter-type fluorescent lamp ballast is disabled in case the output current from the inverter exceeds some pre-established threshold level for more than a very brief period.”
Current output was monitored, and if current output exceeded some threshold for a specified short time, an actuation signal was sent & inverter was disabled

Prior Art:
A USSR certificate (!) – described device for protecting an inverter circuit in an undisclosed manner via a control means
Did not indicate specific manner for overload protection
Kammiller -
Disclosed disabling the converter in the event of high-load current condition in order to protect inverter circuit
Overload protection by disabling inverter w/ cutoff switch

Answer 38

NOT Patentable

Known technique to improve similar device/method/product…in same way
→ predictable results

Court - “it would have been obvious to one of ordinary skill in the art to use the threshold signal produced in the USSR device to actuate a cutoff switch to render the inverter inoperative as taught by Kammiller.”

In re Nilssen, 851 F.2d 1401, 7 USPQ2d 1500 (Fed. Cir.1988)

Question 39

PATENTABLE or NON-PATENTABLE?

System which employs a…
screw anchor for underpinning existing building foundations &
Metal bracket to transfer the building load onto the screw anchor

Prior Art:
Fuller – Used a…
screw anchors for underpinning existing foundations
Concrete haunch to transfer the load of the foundation to the screw anchor
Gregory – use a metal bracket

Answer 39

NOT Patentable

Known technique to improve similar device/method/product…in same way
→ predictable results

NOTE: Same as Example 2 in subsection A-Combining

Nature of problem to be solved:
underpinning unstable foundations
Need to connect the member to the foundation to accomplish goal
Problem would have led OS to choose an appropriate load-bearing member and a compatible attachment, therefore…
Obvious to OS use a metal bracket (Gregory) in combo w/ a screw anchor (Fuller) to underpin unstable foundations

Also Example 2 of subsection C- Known Technique:
The nature of the problem to be solved may lead inventors to look at references relating to possible solutions to that problem
Therefore, it would have been obvious to use a metal bracket (as shown in Gregory) with the screw anchor (as shown in Fuller) to underpin unstable foundations

Ruiz v. AB Chance Co., 357 F.3d 1270, 69 USPQ2d 1686 (Fed. Cir. 2004)

Question 40

PATENTABLE or NON-PATENTABLE?

A system (computer) for automatic record keeping of bank checks & deposits
Customer-put a numerical category code on each check/deposit slip
Check-processing system would record these on the check w/ magnetic ink
W/ this system-bank can provide statements to customers broken down to give subtotals for categories
Claimed-also allowed bank to print reports according to style requested by customer
IMPROVED SYSTEM:
Claimed invention supplemented “base system” by recording a category code which can then be utilized to track expenditures by category
Cat. Code = # recorded on check or deposit slip-is read, converted into magnetic ink imprint & processed in data system to include cat. code

Prior Art:
BASE SYSTEM:
Banks routinely did much of record-keeping automatically
System read any magnetic ink characters- ID account & routing
Also reads amt of check-printed that in a designated area
Check then sent through a further data processing step-used magnetic ink info to generate records
Systems included generating periodic statements for each account
KNOWN TECHNIQUE:
Use of account #’s (generally used to track total transactions)
Account #s (identifying data capable of processing in the automatic data processing system) were used to distinguish between different customers.
Banks also segregated debits attributable to service charges w/ in any separate account&raquo_space;subtotals for those charges.
Supplementing the account information with additional digits (the category codes)solved the problem by effectively creating a single account that can be treated as distinct accounts for tracking and reporting services.

Answer 40

NOT Patentable

Applying known technique …ready for improvement

Court –“[u]nder respondent’s invention, then, a general purpose computer is programmed to provide bank customers with an individualized and categorized breakdown of their transactions during the period in question.”

Applying KNOWN TECHNIQUE to BASE:
Supplementing account info w/ additional digits (cat. code) solved problem of category breakdown by effectively creating a single account that can be treated as distinct accounts for tracking/reporting
Category code.allowed what might previously have been separate accounts to be …a single account, but with a number of sub-accounts
The basic technique of putting indicia on data which then enabled standard sorting, searching, and reporting yielded no more than the predictable outcome which one of ordinary skill would have expected to achieve with this common tool of the trade and was therefore an obvious expedient.
The Court held that “[t]he gap between the prior art and respondent’s system is simply not so great as to render the system nonobvious to one reasonably skilled in the art.”

Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976)

Question 41

PATENTABLE or NON-PATENTABLE?

amlodipine besylate -sold in tablet form in US as Norvasc®
New- Pfizer had discovered that besylate form had better manufacturing properties (e.g., reduced stickiness”)

Prior Art:
Known at time of invention:
Amlodipine & use of besylate ions
Amlodipine known to have same therapeutic properties as being claimed for amlodipine besylate

Answer 41

NOT Patentable

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Pfizer – argued that results of finding amlodipine besylate would have been unpredictable and therefore nonobvious
Court – rejected notion that unpredictability could be equated with nonobvisouness here, because there were only a finite number (53) of pharmaceutically acceptable salts to be tested for improved properties
OS having problems with machinability of amlodipine would have looked to forming a salt of the cmpd and would have been able to narrow the group of potential salt-formers to a group of 53 anions known to form pharmaceutically acceptable salts, which would be an acceptable # to form a “reasonable expectation of success”

Question 42

PATENTABLE or NON-PATENTABLE?

Sustained release formulations of the drug oxybutynin -drug released @ a specific rate of 24 hrs
Spec pointed out that development of sustained-release formulations of such drugs presented particular problems

Prior Art:
Oxybutynin was known to be highly water soluble
Morella – sustained-released compositions of highly water-soluble drugs, as exemplified by sus-release morphine
Also ID’d oxybutynin as belonging to the class of highly water-soluble drugs
Baichwal -
Sust-release form of oxybutynin that had a different release rate than the claimed invention
Wong -
Taught a generally applicable method for delivery of drugs over a 24-hr period
Mentioned applicability of method to several categories to which oxybutynin belonged, but didn’t specifically mention oxybutynin

Answer 42

NOT Patentable

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Court -
Because absorption properties of oxybutynin would have been reasonably predictable at the time of the invention, there would have been reasonable expectation of successful dev’t of a sustained-release formulation
The PA, as evidenced by the spec, had recognized the obstacles to be overcome in dev’t of sus-release of highly water sol. Drugs, and had suggested a finite # of ways to overcome the obstacles
Claims were obvious because would have been obvious to try the known methods for formulating sus-release comp. w/ reasonable expectation of success
Court was NOT swayed by a lack of absolute predictability

Question 43

PATENTABLE or NON-PATENTABLE?

Isolated nucleic acid molecule
The nucleic acid encoded a particular polypeptide
Polypeptide was identified in the claim by it partially specified sequence & by its ability to bind to a specific protein

Prior Art:
Valiante – the polypeptide encoded by the claimed nucleic acid
But-didn’t disclose either the sequence of the polypeptide or the claimed isolated nucleic acid molecule
Did disclose that employing conventional methods such as disclosed by PA lab manual (Samsbrook), the sequence of the polypeptide could be determined, and the nucleic acid molecule could be isolated

Answer 43

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Board – OS would have had reasonable expectation that a nucleic acid molecule within the claimed scope could have been successfully been obtained
Appellant – relying on In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210 (Fed. Cir. 1995)
argued improper for Office to use the polypeptide of Valiante patent together w/ methods in Sambrook to reject a claim drawn to a specific nucleic acid molecule w/o providing a reference showing a structurally similar nucleic acid molecule
Board –
that “when there is motivation to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
Fed. Circuit- subsstantially adopted Board’s reasoning, BUT…
SC in KSR unambiguously discredited Deuel decision, insofar as it implies the obviousness inquiry cannot consider that the combo of a claim’s constituent elements was obvious to try
Instead, Kubin stated that KSR “resurrects” the Fed Circuit’s own wisdom in O’Farrell-”to differentiate between proper & improper applications of “obvious to try”, the Fed Circuit outlines two classes of situation where “obvious to try” is erroneously equated with obviousness under 103”

Two classes where “obvious to try” is erroneously equated w/ obviousness:
- When what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at the successful result, where PA gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful
- When what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.

In re Kubin, 561 F.3d 1351 (Fed. Cir. 2009)

Question 44

PATENTABLE or NON-PATENTABLE?

When what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at the successful result

Prior Art:
Gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful

Answer 44

PATENTABLE

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Question 45

PATENTABLE or NON-PATENTABLE?

When what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation

Prior Art:
Gave only general guidance as to the particular form of the claimed invention or how to achieve it.

Answer 45

PATENTABLE

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Question 46

PATENTABLE or NON-PATENTABLE?

Pioglitazone -a thiazolidinedione (TZDs) marketed by Takeda for Type 2 diabetes

Prior Art:
Large # of similar prior art TZD cmpds
54 were identified in Takeda’s prior patent

Argument:
a 2-step modification involving homologation & ring-walking of a known cmpd (Compound B) would have produced pioglitazone

Answer 46

PATENTABLE

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Alphapharm – argued that a 2-step modification involving homologation & ring-walking of a known cmpd (Compound B) would have produced pioglitazone, so obvious
District Court – would have been no reason to select cmpd B as a lead cmpd
On top of Takeda’s 54 PA cmds, “100s of millions” of TZD cmpds were more generally disclosed

Fed Circuit – Affirmed
- KSR Court recognized “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” KSR,127 S.Ct. at 1732.
- In such circumstances, “the fact that a combination was obvious to try might show that it was obvious under § 103.”
- Here though-rather than ID’ing predictable solutions for antidiabetic treatment, PA disclosed a broad selection of cmpds, any one of which could have been picked as “lead cmpd” (So no reason to select a “lead cmpd”)
- Also, closest (cmpd B) exhibited negative properties>would have directed OS away
- Evidence- It was NOT obvious to try
- So, recognized need for treatment, but no finite # of identified, predictable solutions and no reasonable expectation of success

Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350 (Fed. Cir. 2007)

Question 47

PATENTABLE or NON-PATENTABLE?

Topiramate (used as an anticonvulsant)
Ortho-McNeil discovered it while working on anti-diabetics. A reaction intermediate was found to have anticonvulsant properties

Prior Art:

Answer 47

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Mylan -defense of invalidity due to obviousness rested on an “obvious to try” argument
Didn’t explain why it would have been obvious to begin w/ an anti-diabetic drug precursor, esp. the specific one that led to topiramate, if one was seeking an anti-convulsant
Fed. Circuit – recognized an element of serendipity (runs counter to predictability)
No apparent reason why OS would have chosen the particular starting cmpd or particular synthetic pathway to make the intermediate that was topiramate
Also, no reason to test intermediate for anticonvulsant properties

KSR posits a situation with a finite, and in the context of the art, small or easily traversed, number of options that would convince an ordinarily skilled artisan of obviousness
Doesn’t present a finite # of options easily traversed to show obviousness
Under case law: “Finite” means “small or easily traversed” in context of art in question

Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc., 520 F.3d 1358(Fed. Cir. 2008)

Question 48

PATENTABLE or NON-PATENTABLE?

Oral contraceptive containing micronized drospirenone (marketed as Yasmin®

Bayer - found through experimentation that (unexpectedly) normal pill had same bioavailability as enteric-coated pill, so they developed it micronized but in a normal pill

Prior Art:
Drospirenone-known to have poor water solubility, acid-sensitive, and have contraceptive effects
Also known-micronization improves solubility of poorly water soluble drugs

Answer 48

NOT Patentable

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Fed. Circuit – PA would have funneled formulator to 2 options, so not required to try ALL possibilities. PA was not vague, but guided to use either normal pill or enteric-coated
Mere existence of a large # of options doesn’t lead itself to conclusion of nonobviousness. Where PA leads OS to a narrower set of options, then reduced set is appropriate to consider to determine obviousness

Compared to Sanofi case (#7): art-based reasons to expect both normal and enteric-coated would be therapeutically suitable, even though not all PA studies were in complete agreement. So, results were not unexpected.

Bayer Schering Pharma A.G. v. Barr Labs., Inc., 575 F.3d 1341 (Fed. Cir. 2009)

Question 49

PATENTABLE or NON-PATENTABLE?

Clopidogrel – an anti-thrombotic cmpd used to treat or prevent heart attack or stroke
Single enantiomer was more potent and had less tox than racemate

Prior Art:
Racemate was known (but hadn’t been separated), and known to have anti-thrombotic properties

Note:
Not known: separation or data on enantiomers

Answer 49

Patentable

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Experts for both parties:
OS couldn’t predict degree to which isomers would exhibit different levels of therapeutic activity & toxicity
Isomer w/ greater therapeutic activity would most likely have greater toxicity
It was difficult to separate isomers at time of invention
Sanofi witness:
They believed separation was unlikely to be productive
“Rare case of absolute stereoselectivity”-D-isomer had all favorable activity and no tox, while L-isomer had no therapeutic activity but virtually all the toxicity
District Court/Fed. Circuit -Apotex hadn’t met burden of proving by clear and convincing evidence that Sanofi’s patent was invalid for obviousness

Even when only a small number of possible choices exist, the “obvious to try” line of reasoning is not appropriate when, upon consideration of all of the evidence, the outcome would not have been reasonably predictable and the inventor would not have had a reasonable expectation of success

Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075 (Fed. Cir. 2008)

Question 50

PATENTABLE or NON-PATENTABLE?

Fan blade for jet engines w/ a swept-forward inner region, a swept-rearward intermediate region & forward-leaning outer region
Each fan blade has 3 regions
Inner-closest to axis of rotation at the hub
Outer- farthest from center of engine & closest to casing surrounding engine
Intermediate- in between

Argument against:
United-
Argued it would have obvious for OS to try a fan blade design in which the sweep angle in the outer region was reversed as compared w/ PA fan blades, in order to reduce end wall shock

Answer 50

PATENTABLE

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Fed. Circuit –disagreed with United
In a proper “obvious to try” approach to obviousness, the possible options for solving a problem must have been “known and finite.”
In this case, there had been no suggestion in the prior art that would have suggested that changing the sweep angle as Rolls-Royce had done would have addressed the issue of endwall shock. Thus, changing the sweep angle “would not have presented itself as an option at all, let alone an option that would have been obvious to try.”

Rolls-Royce, PLC v. United Technologies Corp., 603 F.3d 1325 (Fed. Cir. 2010)

Question 51

PATENTABLE or NON-PATENTABLE?

Method for managing bulk e-mail distribution:
Selecting intended recipients
Transmitting the e-mails
Determining how many had been successfully received
Repeat 1st 3 steps if a pre-determined minimum # of intended recipients do not receive

Prior Art:
Recognized problem in field: Failure to meet desired quota of recipients
3 recognized PA potential solutions:
Increase size of initial recipient list
Resend the e-mails to recipients who did not receive on 1st attempt
Selecting new recipient list and sending e-mails to them
Corresponds to 4th step of invention as claimed

Answer 51

NOT Patentable

Obvious to Try (Choosing from a Finite # of Identified, Predictable Solutions, with a Reasonable Expectation of success)

Fed. Circuit:
“Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.”
the kind of strict evidence-based teaching, suggestion, or motivation required in In re Lee, 277 F.3d 1338, 1344 (Fed. Cir. 2002), is NOT an absolute requirement for an obviousness rejection in light of the teachings of KSR
although“ a reasoned explanation that avoids conclusory generalizations” is required to use common sense, identification of a “specific hint or suggestion in a particular reference” is not

Fed Circuit allowed common sense to be used here to supplement a missing element in the prior art-because it was unusually simple. Also see Randy vs Apple in MPEP (common sense doesn’t USUALLY get used to supply a missing element but only motivation. 103 usually requires all the elements to be in the prior art, unless as simple as resending an e-mail

Perfect Web Technologies, Inc. v. Info USA, Inc., 587 F.3d 1324 (Fed. Cir. 2009)

Question 52

PATENTABLE or NON-PATENTABLE?
A system (computer) for automatic record keeping of bank checks & deposits
Customer-put a numerical category code on each check/deposit slip
Check-processing system would record these on the check w/ magnetic ink
W/ this system-bank can provide statements to customers broken down to give subtotals for categories
Claimed-also allowed bank to print reports according to style requested by customer
IMPROVED SYSTEM:
Claimed invention supplemented “base system” by recording a category code which can then be utilized to track expenditures by category
Cat. Code = # recorded on check or deposit slip-is read, converted into magnetic ink imprint & processed in data system to include cat. code

Prior Art:
BASE SYSTEM:
Banks routinely did much of record-keeping automatically
System read any magnetic ink characters- ID account & routing
Also reads amt of check-printed that in a designated area
Check then sent through a further data processing step-used magnetic ink info to generate records
Systems included generating periodic statements for each account
KNOWN TECHNIQUE:
Use of account #’s (generally used to track total transactions)
Account #s (identifying data capable of processing in the automatic data processing system) were used to distinguish between different customers.
Banks also segregated debits attributable to service charges w/ in any separate account&raquo_space;subtotals for those charges.
Supplementing the account information with additional digits (the category codes)solved the problem by effectively creating a single account that can be treated as distinct accounts for tracking and reporting services.

Answer 52

NOT Patentable

Known work in one field/endeavor prompting variations of an analogous device/product/method in same/different field based on Design incentives/other market forces …Variations are predictable to OS

Court –“[u]nder respondent’s invention, then, a general purpose computer is programmed to provide bank customers with an individualized and categorized breakdown of their transactions during the period in question.”

Applying KNOWN TECHNIQUE to BASE:
Supplementing account info w/ additional digits (cat. code) solved problem of category breakdown by effectively creating a single account that can be treated as distinct accounts for tracking/reporting
Category code allowed what might previously have been separate accounts to be …a single account, but with a number of sub-accounts
The basic technique of putting indicia on data which then enabled standard sorting, searching, and reporting yielded no more than the predictable outcome which one of ordinary skill would have expected to achieve with this common tool of the trade and was therefore an obvious expedient.
The Court held that “[t]he gap between the prior art and respondent’s system is simply not so great as to render the system nonobvious to one reasonably skilled in the art.”

Example 1 of Subsection F:
Court
Problem addressed by applicant - the need to give more detailed breakdown by a category of transactions ~ was closely analogous to the task of keeping track of the transaction files of individual business units. Id. At 229, 189 USPQ at 261. Thus, an artisan in the data processing area would have recognized the similar class of problem and the known solutions of the prior art and it would have been well within the ordinary skill level to implement the system in the different environment.

Dann v. Johnston, 425 U.S. 219, 189 USPQ 257 (1976)

Question 53

PATENTABLE or NON-PATENTABLE?

Learning device to help young children read phonetically
“interactive learning device, comprising:
Housing including a plurality of switches
2nd production device in communication w/ switches & including a processor & a memory
At least 1 depiction of a sequence of letters…
A reader configured to communicate the ID of the depiction to the processor
Wherein selection of a depicted letter activates an associated switch…

Prior Art:
Bevan – Sowed an electro-mechanical toy got phonetic learning
Super Speak & Read Device (SSR) - an electronic reading toy

Answer 53

NOT Patentable

Known work in one field/endeavor prompting variations of an analogous device/product/method in same/different field based on Design incentives/other market forces …Variations are predictable to OS

Court:
Claimed invention would have been obvious in view of combo of 2 pieces of PA & knowledge of OS
Claimed invention was but a variation on already known children’s toys
Variation presented no nonobvious advance over other toys
No technological advance beyond skill shown in SSR device
“[a]ccomodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing children’s learning devices. Applying modern electronics to older mechanical devices has been commonplace in recent years.”

Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d1157, 82 USPQ2d 1687 (Fed. Cir. 2007)

Question 54

PATENTABLE or NON-PATENTABLE?

Adjustable pedal assembly w/ a fixed pivot point & an electrical pedal-position sensor attached to the assembly support
Fixed pivot point - means pivot wasn’t changed as pedal was adjusted
Placement of sensor on assembly support kept sensor fixed while pedal was adjusted
Conventional gas pedals operated by a mechanical link which adjusted throttle based on travel of pedal from a set position
Throttle -controlled the combustion process & available power generated by engine

No prior art: electronic throttle control combined with pedal assembly which kept the pivot point fixed when adjusting the pedal

Prior Art:
Newer cars-used computer-controlled throttles in which sensor detected the motion of the pedal & sent signals to the engine to adjust the throttle
Marketplace -strong incentive to convert mechanical pedals to electronic pedals
PA taught methods to do so
Asano -
An adjustable pedal w/ a fixed pivot point w/ mechanical throttle control
Byler – ‘936 patent
Electronic pedal sensor which was placed on a pivot point in the pedal assembly rather than in or on the pedal’s footpad
Rixon -
Adjustable pedal assembly (sensor in footpad) w/ electronic sensor for throttle control

Answer 54

NOT Patentable

Known work in one field/endeavor prompting variations of an analogous device/product/method in same/different field based on Design incentives/other market forces …Variations are predictable to OS

Court:
“[t]he proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.”
Found that technological developments in the automotive design would have prompted a designer to upgrade Asano with an electronic sensor
Next Q? Where to attach the sensor?
OS would have known to place the sensor on a nonmoving part of the pedal structure and the most obvious nonmoving point on the structure from which a sensor can easily detect the pedal’s position was a pivot point
Conclusion: it would have been obvious to upgrade Asano’s fixed pivot point adjustable pedal by replacing the mechanical assembly for throttle control with an electronic throttle control and to mount the electronic sensor on the pedal support structure.

KSR International Co. v. Teleflex Inc., 550 U.S. __, 82USPQ2d 1385 (2007)

Question 55

PATENTABLE or NON-PATENTABLE?

Consumer electronics device using bioauthentification to authorize sub-users of an authorized credit account to place orders over a communication network up to a preset max sub-credit limit

Prior Art:

Nakano -
Consumer electronics device like the claimed, except that security was provided by a password device instead of bioauth.
Harada -
Use of bioauthentification device (fingerprint sensor) on a consumer electronics device (remote control) to provide bioauthentification
Dethloff -
Known to substitute bioauthentification for PIN authentification to enable a user to access credit via a consumer electronics device

Answer 55

NOT Patentable

Known work in one field/endeavor prompting variations of an analogous device/product/method in same/different field based on Design incentives/other market forces …Variations are predictable to OS

Board:
PA shows OS “…would have been familiar with using bioauthentication information interchangeably with or in lieu of PINs to authenticate users.” The
OS in the art of consumer electronic devices would have found it obvious to update the prior art password device with the modern bioauthentication component and thereby gain, predictably, the commonly understood benefits of such adaptation, that is, a secure and reliable authentication procedure.

Ex Parte Catan, 83 USPQ2d 1568 (Bd. Pat. App. & Int. 2007)