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Flashcards in KSR Bilski Deck (20):
1

invention: put sub coating between E+A combination to prevent E counter A

examiner rejected all claims submitted because the claimed invention was obvious over Berra in light of Jeter E+A, further relying upon the general knowledge within the industry teaching subcoatings of pharmaceutical preparations and there being no evidence of unpredictability.

which of the following is the most appropriate reaction to this rejection?
A Advise Beans that he should give up because the addition of an inert ingredient into a known compound is within the common sense of those skilled in the art and the claim is not patentable.
B File a reply arguing that the formulation was not obvious because it was the inventor who recognized the flaws in the prior art formulation; therefore, one of skill in the art would not have any reason to modify the initial formulation.
C File a reply arguing that there was no teaching, suggestion or motivation to add an inert subcoating surrounding the core and, therefore, the claimed invention is patentable.
D File a reply arguing that it is inappropriate for the examiner to have relied upon the general knowledge within the industry, further arguing that subcoatings cannot be said to be within the common sense understanding of one skilled in the art.
E File a continuation-in-part with a simultaneously filed preliminary amendment adding an enabling disclosure explaining that the strange and unusual properties achieved through the presence of the subcoating renders the claimed invention nonobvious.

B

Even though subcoatings for enteric drug formulation were known (but it interact with the stuffing result in undesirable result here), and there was no evidence of undue technical hurdles or lack of a reasonable expectation of success, the formulation was nevertheless not obvious because the flaws in the prior art formulation that had prompted the modification had not been recognized. Thus there would have been no reason to modify the initial formulation, even though the modification could have been done.

2

invention: put sub coating between E+A combination to prevent E counter A

examiner rejected all claims submitted because the claimed invention was obvious over Berra in light of Jeter E+A, further relying upon the general knowledge within the industry teaching subcoatings of pharmaceutical preparations and there being no evidence of unpredictability.

which of the following arguments would overcome the rejection?
A A person of skill in the art would have chosen a compound other than sub coating had they appreciated the problem created by the interaction between E and A.
B Jones stumbled upon the invention fortuitously and, therefore, the invention cannot be rightfully characterized as obvious.
C The combination of prior arts is inappropriate because the references alone do not provide each and every element found in the claimed invention.
D A person of skill in the art would not be familiar with the teachings of prior arts and, therefore, they constitute nonanalogous art.
E None of the above.

A

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4. In accordance with patent laws, rules and procedures, an invention is most likely non-obvious in which of the following circumstances?
A The prior art contains no teaching, suggestion or motivation to combine the references cited by the patent examiner.
B The prior art teaches away from the claimed combination and the combination yields more than predictable results.
C One of ordinary skill in the art would have been motivated to combine known elements in a novel arrangement.
D The prior art combined by the patent examiner is tangentially related to the problem that the inventor was trying to solve.
E It was obvious to try a finite set of combinations, but at the outset it was not apparent which combination would be useful.

A: still can use common sense to combine
However, this did not preclude examiners from employing common sense. More recently [in
DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1366 (Fed.Cir. 2006)], we explained that use of common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations.

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6. On behalf of inventor Butch, you file a patent application directed to a retractable segmented covering system, which can be used to cover almost any structure or container, including truck trailers. Independent claim 1 explains the invention includes a plurality of flexible cover sections with a plurality of parallel supporting bows spaced therebetween and a drive assembly. Each cover section is detachably connected between the supporting bows and is removable independent of the other cover sections. You receive a first office action rejecting claim 1 as being obvious over Cassidy in view of Kidd. Cassidy discloses a truck cover including every limitation of claim 1 except for cover sections that can be removed from the cover system independent of the other cover sections. Kidd discloses a truck cover made up of a number of cover sections. In accordance with patent laws, rules and procedures, this obviousness rejection is:
A Correct because if a claimed invention incorporates each and every limitation of the prior art, the invention as claimed fails to satisfy the novelty requirement of 35 U.S.C. 102.
B Correct because if a claimed invention incorporates each and every limitation of two or more pieces of prior art, the invention as claimed fails to satisfy the nonobviousness requirement of 35 U.S.C. 103.
C Correct because an invention is obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined.
D Incorrect because the Butch invention mechanizes what is taught by the combination of Cassidy and Kidd, thereby introducing a unique and nonobvious inventive concept.
E Incorrect because the relevance of Kidd is only understood after first viewing the Cassidy disclosure, thereby making the combination of Cassidy and Kidd for obviousness purposes inappropriate.

C

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7. Which of the following statements is or are in accord with the patent laws, rules and procedures?

(1)A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results.

(2)A claimed invention is not likely to be obvious even if it is a combination of known prior art elements, provided the combined elements would reasonably have been expected to maintain their respective properties or functions after they have been combined.

(3)When determining whether a reference in a different field of endeavor may be used to support a case of obviousness, it is necessary to consider the problem to be solved.

Statements 1 and 3

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20. Which of the following statements is most in accordance with patent laws, practice and procedures relative to the examiner's prima facie case of obviousness where the claimed invention is a compound?

1.Structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness.

2.It is sufficient to show that the claimed and prior art compounds possess a sufficiently close relationship to create an expectation, in light of the totality of the prior art, that the new compound will have similar properties to the old.

3.Once such a prima facie case is established, it falls to the applicant or patentee to rebut it, for example with a showing that the claimed compound has unexpected properties.

4.If it is known that some desirable property of a mixture derives in whole or in part from a particular one of its components, or if the prior art would provide a person of ordinary skill in the art with reason to believe that this is so, the purified compound is prima facie obvious over the mixture even without an explicit teaching that the ingredient should be concentrated or purified.

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21. A proper determination that an invention is obvious will consider which of the following?

1.Whether there exists a starting reference point or points in the art, prior to the time of invention, from which a skilled artisan might identify a problem and pursue potential solutions.

2.Whether the prior art up to the time of invention would give some reasons, available within the knowledge of one of skill in the art, to make particular modifications to achieve the claimed invention.

3.Whether the prior art before the time of invention would supply some reasons for narrowing the prior art universe to a finite number of identified, predictable solutions.

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25. Regarding obviousness, which of the following are not true?
A The mere existence of a large number of options does not in and of itself lead to a conclusion of nonobviousness.
B Even when only a small number of possible choices exist, the obvious-to-try line of reasoning is not always appropriate.
C A mere reason to combine in conjunction with the technical ability to combine does not generally lead to a conclusion that the claimed invention would have been obvious.
D When constituent elements are being employed in accordance with their recognized functions, and would have predictably retained their respective functions when combined, the claimed invention is obvious.
E All of the above are true.

C. C is FALSE. Example 4.4. Ecolab, Inc. v. FMC Corp., 569 F.3d 1335 (Fed Cir. 2009). Teaching point: A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how to do so.

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26. Regarding obviousness, which of the following are not false?
A For there to be a proper obviousness determination, a reasonable expectation of success is not a mandatory requirement in all cases.
B Rejections on obviousness grounds can be sustained by conclusory statements when there is sufficient belief and it is readily apparent that the combination of references would be within the common sense understanding of one of skill in the art.
C A reference is only said to teach away when a person of ordinary skill, upon reading the reference, would be explicitly discouraged from following a particular path, option or feature.
D All rejections under 35 U.S.C. 103 must articulate clear reason(s) why the claimed invention would have been obvious.
E All of the above are false.

D is TRUE. In discussing Wyers v. Master Lock Co. (Fed. Cir. July 22, 2010), the PTO wrote: "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit."

C is FALSE. Teaching away is not about an explicit discouragement; that is too limiting a definition. See In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007), which says: "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant."

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29. To establish a prima facie case of obviousness in cases involving new chemical compounds, an examiner:
A Must identify some reason that would have led a chemist to modify a known compound in a particular manner.
B When issuing a rejection based on structural similarity, must articulate some motivation that would have led one of ordinary skill in the art to select and modify a known compound in a particular way to achieve the claimed compound.
C Can demonstrate that the requisite motivation provoking one of skill in the art to select and modify a known compound was implicitly within the prior art.
D Need not point to only a single lead compound.
E All of the above.

E

ABC are verbatam copy

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31. Which of the following statements accurately defines when "obvious to try" is erroneously equated with obviousness under 35 U.S.C. 103?

1.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 a successful result, where the 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.

2.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.

3.Where what is "obvious to try" is determined by merely throwing metaphorical darts at a board filled with combinations of prior art possibilities to find the requisite elements and limitations that together combine to yield the claimed invention.

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12

32. You file a patent application on behalf of your new client claiming a new and improved drug useful to control blood sugar in patients who suffer from Type 2 diabetes. The patent examiner rejected the claimed compound as obvious based on compound b. In fact, compound b was the most effective anti-diabetic compound in the prior art, and thus the examiner explains that one of ordinary skill in the art would have been motivated to make the claimed compounds using compound b as the lead compound (i.e., a compound in the prior art that would be most promising to modify in order to improve upon its anti-diabetic activity and obtain a compound with better activity). The patent examiner asserts that after one of ordinary skill in the art selected compound b as the lead compound, two obvious chemical changes would be made to result in the claimed compound. Your client agrees that the changes to compound b would be obvious selected as a lead compound. You present the examiner with an article written by renowned expert Professor Oscar Piate, which specifically identifies three specific compounds that were deemed most favorable for further research in terms of toxicity and activity. Piate does not mention compound b as one of the three most favorable compounds, explaining that due to negative side effects associated with weight gain, compound b is not a good candidate for future research. When presented this reference, the examiner should:
A Withdraw the obviousness rejection because it is inappropriate to focus on a lead compound when making an obviousness determination; rather, the totality of the prior art should be considered.
B Withdraw the obviousness rejection because since diabetes is a chronic disease requiring long-term treatment researchers would have been dissuaded from selecting a lead compound that exhibited negative effects, such as considerable weight gain.
C Continue to find the claimed compound obvious because compound b was known to be the most effective anti-diabetic compound in the prior art, thus making it the most likely choice for further research.
D Continue to find that the claimed compound is obvious regardless of whether compound b was an appropriate lead compound because obvious changes to compound b would still, nevertheless, result in the claimed compound.
E Continue to find that the claimed compound is unpatentable because it is an obvious variation of a known compound within the same field of endeavor and used for the same purpose.

the court determined that the prior art did not suggest to one of ordinary skill in the art that compound b would be the best candidate as the lead compound for antidiabetic research." Thus, experts taught away from the use of compound b.

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37. With respect to obviousness, which of the following are true?

1.In cases involving new chemical compounds, it is necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.

2.If a patent examiner makes a prima facie showing of obviousness, the applicant may rebut based on unexpected results by demonstrating that the claimed invention exhibits some superior property or advantage that a person of ordinary skill in the relevant art would have found surprising or unexpected.

3.In order to demonstrate that a claimed invention is obvious, a patent examiner can demonstrate how one of ordinary skill in the art would be able to retrace the steps of the applicant in order to achieve the claimed invention.

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Statement 3 states that an examiner can use the knowledge of one of ordinary skill in the art at the time the invention was made to re-visit and re-assess (i.e., retrace) each step taken by the inventor to determine whether it was obvious. Cf. Ortho-McNeil Pharmaceutical, Inc. v. Mylan Labs, Inc.

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41. With respect to obviousness, which of the following statements are correct relating to the appropriateness of relying on an obvious-to-try rationale?
A A particular course or selection is not obvious to try unless some design need or market pressure or other motivation would suggest to one of ordinary skill to pursue the claimed course or selection.
B An obvious-to-try rationale may be proper when the possible options for solving a problem were known and finite.
C If the possible options were not either known or finite, then an obvious-to-try rationale cannot be used to support a conclusion of obviousness.
D Where there are predictable solutions and there is no evidence of unexpected results, an obvious-to-try inquiry may properly lead to a legal conclusion of obviousness.
E All of the above.

E

Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning

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43. A patent application relates to an invention that compares the number of successfully delivered e-mail messages in a delivery against a predetermined desired quantity, and if the delivery does not reach the desired quantity, repeating the process of selecting and e-mailing a group of customers until the desired number of delivered messages has been achieved. The application claims methods of managing bulk e-mail distribution to groups of targeted consumers comprising (a) matching a target recipient profile, (b) transmitting a set of bulk emails, (c) calculating the number of successfully received e-mails by target recipients and (d) repeating until the quantity actually received exceeds a predetermined quantity. The examiner locates prior art teaching steps (a), (b) and (c) and rejects the claim as being obvious because the addition of step (d) is "merely the logical result of common sense application of the maxim 'try, try again.'" This rejection is:
A Proper because, in making an obviousness determination, the examiner may rely on logic, judgment, and common sense available to the person of ordinary skill that are not necessarily found in any reference or expert opinion.
B Proper because the examiner provided a reasoned explanation that avoids conclusory generalizations and, therefore, can appropriately rely on common sense without need to identify a specific hint or suggestion in a particular reference.
C Proper because even without experimentation, simple logic suggests that sending messages to new addresses is more likely to produce successful deliveries than re-sending messages to addresses that have already failed.
D Proper because there were a finite number of identified, predictable solutions to the identified problem addressed by the invention and no evidence of unexpected results.
E All of the above.

E
Where there were a finite number of identified, predictable solutions and there is no evidence of unexpected results, an obvious to try inquiry may properly lead to a legal conclusion of obviousness. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning

16

1. Which of the following are among the factors for determining whether a method claim that recites or inherently requires a machine or apparatus embodies merely an unpatentable abstract idea?
A The particularity or generality of the elements of the machine or apparatus.
B Whether the machine or apparatus implements the steps of the method.
C The extent to which the machine or apparatus imposes meaningful limits on the execution of the claimed method steps.
D The extent to which the machine or apparatus contributes only nominally or insignificantly to the execution of the claimed method.
E All of the above.

E.

2106 Patent Subject Matter Eligibility
II. JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES
B. Practical Application of Processes (Methods)
1. Factors To Be Considered in an Abstract Idea Determination of a Method Claim
(a) Whether the method involves or is executed by a particular machine or apparatus


If the method involves or is executed by a particular machine or apparatus, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. The Bilski Guidance from July 2010 sets forth three relevant factors to consider, which are encompassed by answers A, B, C and D above, making answer E correct. The factors are: (1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility. (2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility. (3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data-gathering step or in a field-of-use limitation) would weigh against eligibility.

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machine or transformation test

The factors include inquiries from the machine-or-transformation test, which remains a useful investigative tool, and inquiries gleaned from Supreme Court precedent. See In re Bilski, 545 F.3d 943, 954, 88 USPQ2d 1385, 1391 (Fed. Cir. 2009) (stating that “[a] claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”); and Bilski, 561 U.S. at ___, 130 S. Ct. at 3227, 95 USPQ2d at 1007 (stating, “This Court's precedents establish that the machine- or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’”).

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2. Which of the following are among the factors for determining whether a method claim where transformation occurs embodies merely an unpatentable abstract idea?
A The particularity or generality of the transformation.
B The degree to which the allegedly transformed article can be specifically identified.
C The nature of the transformation in terms of the type or extent of change.
D The extent to which the transformation imposes meaningful limits on the execution of the claimed method steps.
E All of the above

E

2106 Patent Subject Matter Eligibility
II. JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES
B. Practical Application of Processes (Methods)
1. Factors To Be Considered in an Abstract Idea Determination of a Method Claim
(b) Whether performance of the claimed method results in or otherwise involves a transformation of a particular article

19

4. If performance of the claimed method involves an application of a law of nature, which of the following are not among the factors for determining whether the method claim embodies merely an unpatentable abstract idea?
A Whether the claim generically recites an effect of the law of nature or claims every mode of accomplishing that effect.
B Whether the claimed method recites an application of a law of nature solely involving subjective determinations.
C The extent to which the application imposes meaningful limits on the execution of the claimed method steps.
D Whether one of ordinary skill in the art would understand the claimed method incorporating the law of nature to be obvious.
E All of the above.

D

2106 Patent Subject Matter Eligibility
II. JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES
B. Practical Application of Processes (Methods)
1. Factors To Be Considered in an Abstract Idea Determination of a Method Claim
(c) Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation

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5. If a general concept is involved in executing the steps of the method, this can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, which of the following factors are relevant to determine whether the claim embodies merely an unpatentable abstract idea?'1.The extent to which use of the concept, as expressed in the method, would preempt its use in other fields.'2.The extent to which the claim is so sweeping as to cover both known and unknown uses of the concept.'3.The extent to which the claim would effectively cover all possible solutions to a particular problem.

E
2106 Patent Subject Matter Eligibility
II. JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES
B. Practical Application of Processes (Methods)
1. Factors To Be Considered in an Abstract Idea Determination of a Method Claim
(d) Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method