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   [TELEFLEX] New Test for Obviousness
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   Author  Topic: [TELEFLEX] New Test for Obviousness  (Read 6230 times)
jolly_cow
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Posts: 12
Re: [TELEFLEX] New Test for Obviousness
« Reply #15 on: May 3rd, 2007, 4:46pm »
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I am no expert in Law and interpretations. But, here
is a process (may be this is patentable Smiley)))
 
Step 1: Before a patent is submitted to the prosecutor,
the inventor shall quote references and the final product
(or gizmo) functionality.
 
Step2: Wait for prosecutor to come up with an "obvious
combination" to satisfy that functionality.
 
Step3: Compare prosecutor's psuedo-procedure with
original inventor's about-to-be submitted procedure
 
Step4: If they match, Yes it is Obvious!! Drop the patent
application; else file it and shut the prosecutor's mouth.
 
I am also not happy with this SC directive (my own interpretation); Hey I got lot of things to do like filing my application Smiley I don’t know why this exercise of patenting, when  1000-pound Guerillas like Microsoft can easily  get away with infringement.
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Isaac
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Posts: 3472
Re: [TELEFLEX] New Test for Obviousness
« Reply #16 on: May 4th, 2007, 7:23am »
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Here is an excerpt from a May 3, 2007 memo summarizing KSR v. Teleflex that was circulated by the Deputy Commissioner for Patent Operations Focarino to the examining corp.  Any grammatical errors and typos below are most likely mine.  Emphasis as added by Deputy Focarino...
 
(4) The Court noted that the analysis supporting a rejection under 35 USC 103(a) should be made explicit and that it was "important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the [prior art] elements" in the manner claimed.  The Court specifically stated:
 
"Often, it will be necessary... to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.  To facilitate review, this analysis should be made explicit."
 
Therefore, in formulating a rejection under 35 U.S.C. 103(a) based upon a combination of prior art elements, it remains necessary to identify a reason why a person of ordinary skill in the art would have combined the prior art elements in the manner claimed.
« Last Edit: May 4th, 2007, 1:18pm by Isaac » IP Logged

Isaac
JimIvey
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  jamesdivey  
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Posts: 2584
Re: [TELEFLEX] New Test for Obviousness
« Reply #17 on: May 4th, 2007, 10:33am »
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Thanks, Isaac!  Looks like they see it the way we do.  Cool!
 
Regards.
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James D. Ivey
Law Offices of James D. Ivey
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patentsusa
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Re: [TELEFLEX] New Test for Obviousness
« Reply #18 on: May 5th, 2007, 12:59am »
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I'm just curious how one would argue about the level of skill of one of ordinary skill in the art.  It would seem to depend on how the application was written--if the application is written such that the target audience is the lowest common denominator (which is usually my goal).  If you can make the application understandable by someone of low skill, then it would be harder for that person to find the invention obvious.  
 
Is this the approach you take?
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Deepak Malhotra, JD, BSEE
Registered Patent Attorney
Malhotra Law Firm
www.patentsusa.com
JimIvey
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  jamesdivey  
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Re: [TELEFLEX] New Test for Obviousness
« Reply #19 on: May 5th, 2007, 11:09am »
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I don't believe the application itself can be used to invalidate the application -- except to the extent there's admitted prior art in the background section.
 
As far as how to show the level of ordinary skill in the relevant art(s), I don't know.  But I have yet to see a significant effort in that respect in more than a handful of rejections I've seen over the last 16 years.
 
I think the TSM test is a fairly simple way to satisfy that requirement as the person of ordinary skill would have explicit instructions to make the particular combination.  I'm not saying that TSM is the only way to show obviousness to one of ordinary skill, but -- done correctly -- it suffices.
 
Regards.
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