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[JSonnabend]

Anyone have a good resources, case, whatever, that I can point a new associate at to quickly bring her up to speed on the rudiments of obviousness under section 103?

Thanks.

- Jeff

[khazzah]

If you read one case on obviousness, it's gotta be KSR v Teleflex.

[MLM]

The PTO published "teaching points" for KSR (from their perspective, of course). http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf

[JSonnabend]

Thanks, guys.  Of course, KSR (and Graham v Deere) seem obvious obviousness choices to me now . . .

 

- Jeff

[khazzah]

The PTO published "teaching points" for KSR (from their perspective, of course). http://edocket.access.gpo.gov/2010/pdf/2010-21646.pdf

I'm not suggesting practitioners ignore this additional KSR guidance from the PTO, but I don't find them to be so helpful. Mainly because I don't see Examiners using these guidelines. Secondarily, because (as MLM points out) these are the PTO's views on particular post-KSR cases, and I've talked to attorneys who have studied these guidelines in detail and don't think the PTO's statement of the holding of the case is always correct.

I have another recommendation: MPEP 2143. It discusses several obviousness "rationales" such as predictable results, simple substitution, etc. I find that while the majority of obviousness rejections still rely on the TSM rationale, quite a few do rely on the other rationales discussed in MPEP 2143. Therefore, it's good to understand those other rationales.

[MLM]

I'm not suggesting practitioners ignore this additional KSR guidance from the PTO, but I don't find them to be so helpful. Mainly because I don't see Examiners using these guidelines. Secondarily, because (as MLM points out) these are the PTO's views on particular post-KSR cases, and I've talked to attorneys who have studied these guidelines in detail and don't think the PTO's statement of the holding of the case is always correct.

Fair enough. I suggest the guidelines because, as in working with a client, I believe that it is beneficial to see their point of view, even if you disagree with it.

[Patent Agent]

I'm not suggesting practitioners ignore this additional KSR guidance from the PTO,

True enough.  PTO doesn't always get it right on these matters.  Especially KSR.  TSM is a large area even without KSR considerations.  I don't think one has to get hung up on KSR so much.

[JimIvey]

Thanks, guys.  Of course, KSR (and Graham v Deere) seem obvious obviousness choices to me now . . .

Given that new attorneys are used to learning through reading cases, I'd start there.

I think a great learning experience (particularly in dealing with the USPTO) would be to ask the new attorney to review the USPTO teaching points and list as many things wrong with them as they can find.  It'd be worth some time to discuss all the problems with the guidelines.  And, I think the exercise would get the new attorney to really focus on what KSR really says and what it doesn't say.

It will also teach the new attorney to not just accept the USPTO's position on the law and to not be afraid to challenge them when they're wrong.

Regards.

[NJ Patent1]

Of course, KSR "rules".  But it dindn't toss-out all CAFC precedents.  "Patents and the Federal Citcuit" is IMO good general background.  "Patent Law Basics" is also OK, my only beef is that it relies too heavily on DC cases.  But I'm not shilling either and in your situation I've referred freshly-minted patent lawyers to them.  MPEP is not bad.  Not "law", but as a practical matter the individual will see what might be thrown against them. 

[JSonnabend]

Thanks again, guys.  The case law is my chosen starting point because this is a litigation associate, not a prosecutor.

- Jeff

[khazzah]

Thanks again, guys.  The case law is my chosen starting point because this is a litigation associate, not a prosecutor.

And the goal is to teach said litigation associate about obviousness so he can assert/defend against patents in court? Or the goal is to teach said litigation associate about obviousness so he can prosecute?

If the latter, I'd still start with KSR, but next step would be MPEP and/or PTO guidelines.

[JSonnabend]

She's gong to work on an appeal brief to the CAFC from the BPAI in an inter partes reexam.

- Jeff

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