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Isaac
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Re: Combining patents
« Reply #5 on: Aug 2nd, 2007, 2:37pm »
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on Aug 2nd, 2007, 12:49pm, JimIvey wrote:

From what I understand, the punditry agrees that the chances of successful challenge are increased, but none will say by how much.  My perception is that the amount of increase in those chances is rather modest.  That case really hasn't affected my practice at all.
 
Regards.

 
I think things have changed a bit more than Jim does.  The patent office put out some interim guidelines, but recently indicated that they'd sent some revised guidelines to OMB and plan to conduct training of the Examining Corp once the guidelines are rubber stamped (er, I mean approved).    
 
I attended a PLI presentation yesterday in which some recent BPAI appeals decisions relying on KSR were discussed.   I think you can get an impression of how things are likely to evolve from looking at those.
 
My own impression is that the impact is likely to vary significantly depending on the details of your practice.  If you were working at a corporation that was in the habit of filing a patent application everytime somebody made a clever change on the production line, I think examiners will find it easier to reject claims to those kinds of inventions.   I think overcoming such rejections will require more evidence as opposed to argument than prosecutors are accustomed to using.
 
On the other hand, if your clients are more selective about filing and aren't working in crowded fields, you might find a lesser impact.  
 
My personal impression about KSR is that it's mostly about how difficult it ought to be to prove obviousness.  The Supreme Court wants to see more claims rejected at the patent office and found invalid on summary judgment rather than at trial and has lower the required showing by the trier of fact significantly.
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Isaac
JimIvey
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Re: Combining patents
« Reply #6 on: Aug 2nd, 2007, 6:20pm »
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on Aug 2nd, 2007, 2:37pm, Isaac wrote:
My own impression is that the impact is likely to vary significantly depending on the details of your practice.  If you were working at a corporation that was in the habit of filing a patent application everytime somebody made a clever change on the production line, I think examiners will find it easier to reject claims to those kinds of inventions.   I think overcoming such rejections will require more evidence as opposed to argument than prosecutors are accustomed to using.

That's a good point.  I don't do that type of work anymore (patent everything that moves and some things that just lie there).  I agree that type of work will be harder to get through the PTO.
 
As I posted elsewhere earlier, I didn't rely on the specific details of the TSM test that KSR explicitly did away with.  So, Iike I said, my practice won't change.  I described more details about that in another topic somewhere.
 
By the way, is there a convenient link to find BPAI decisions using KSR, Isaac?  I'd be interested to look those over.
 
Regards.
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James D. Ivey
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Re: Combining patents
« Reply #7 on: Aug 2nd, 2007, 10:59pm »
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Here's a few recent precedential cases that discuss KSR.
 
uspto[.]gov[/]web[/]offices[/]dcom[/]bpai[/]prec[/]fd070820[.]pdf
 
uspto[.]gov[/]web[/]offices[/]dcom[/]bpai[/]prec[/]fd071925[.]pdf
 
uspto[.]gov[/]web[/]offices[/]dcom[/]bpai[/]prec[/]fd070819[.]pdf
 
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JimIvey
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Re: Combining patents
« Reply #8 on: Aug 3rd, 2007, 1:06am »
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Thanks.  Here are the links to save others the hassle of editing out the brackets.
 
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd070820.pdf
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071925.pdf
http://www.uspto.gov/web/offices/dcom/bpai/prec/fd070819.pdf
 
Regards.
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James D. Ivey
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