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A recent decision from the Federal Circuit, though nonprecedential, may help provide some boundaries to the scope of analogous art in the context of an obviousness rejection. In Smith & Nephew Inc., v. Hologic, Inc.,1 the Federal Circuit determined that a prior art reference used to establish a prima facie case of obviousness by the USPTO Examiner, did not… Read more »
In Honeywell v. Mexichem, the Federal Circuit found that the PTAB committed legal error during an inter partes reexamination by improperly relying on inherency to find obviousness and in its analysis of motivation to combine references.1 The claims of the patent owned by Honeywell are directed to a heat transfer composition that is a mixture of the tetrafluoroproene… Read more »
The USPTO increased fee schedule, which sets or adjusts 202 patent fees for large, small, and micro entities, goes into effect January 16, 2018.1 The final rule was published in the Federal Register on November 14, 2017 and is authorized by Section 10 of the Leahy-Smith America Invents Act (AIA).2 The increased fees are broken down… Read more »
A recent decision from the Federal Circuit indicates that the order in which a court considers evidence attempting to demonstrate non-obviousness is not important, so long as it is considered. In prosecution, this translates to an increased need for strong declarations when traversing obviousness rejections. In Eli Lilly and Co. v. Perrigo Co., the United States… Read more »
On November 7, 2017, the USPTO issued a final rule establishing that communications “between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner’s authority shall receive the same protections of privilege under Federal law as if that communication were… Read more »
The Federal Circuit reversed and remanded a decision by the Delaware district court that found claims directed to a genus of antibodies satisfied the written description and enablement requirements.1 The Federal Circuit held that the district court erred by (1) excluding post-priority-date evidence to demonstrate that the patents did not provide adequate written description and (2)… Read more »
The PTAB found that methods for treating patients using the chemotherapy drug Jevtana were unpatentable in light of references that taught administering the drug, but were silent on the drug’s clinical efficacy.1 The Board disagreed with Aventis that the claim’s preamble required clinical efficacy, and indeed found the preamble to be non-limiting. Representative independent claims of… Read more »
The Federal Circuit in In re Stepan vacated and remanded a PTAB decision that affirmed an examiner’s rejection of Stepan’s claims as obvious, stating that the Board “failed to adequately articulate its reasoning, erroneously rejected relevant evidence of nonobviousness, and improperly shifted to Stepan the burden of proving patentability.”1 Stepan filed a patent application directed to herbicidal… Read more »
In Millenium v. Sandoz,1 the claim at issue recites a lyophilized compound that is an ester of bortezomib and D-mannitol. The Federal Circuit formulated the obviousness analysis by asking whether a person of ordinary skill, seeking to remedy the known instability of bortezomib “would obviously produce the D-mannitol ester of bortezomib, a previously unknown compound.”2 Employing a lead… Read more »
The PTO recently issued a report on two roundtables held to discuss patent eligible subject matter. Views on recent Supreme Court subject matter eligibility jurisprudence varied depending on the industry affected. The life sciences industry was strongly critical of the Mayo/Alice two-step framework. In particular, representatives from the life sciences industry asserted that “natural products and their… Read more »
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