New Prosecution Topic 2/1/2010 - Other Secondary Indicia

Other secondary considerations, such as commercial success, long-felt but unresolved needs and the failure of others, may also be helpful to bolster an argument against an obviousness rejection under 35 U.S.C. § 103. The USPTO relies on Applicants to provide evidence of a nexus between rebuttal evidence and the claimed invention. Such evidence should be supported by a Declaration under 37 C.F.R. § 1.132 and/or the specification in the rare case that the specification provides such evidence. To view the post, use the navigation menu on the side of this site under Prosecution Topics 35 U.S.C. § 103 Secondary Indicia Other Indicia, or click Here.

New Prosecution Topic 1/19/2010 - Unexpected Results

As noted in Graham v. John Deere Co., secondary considerations may be presented as evidence of nonobviousness. Particularly in the chemical fields, one such pertinent consideration may be unexpected results. In order to successfully make an unexpected results argument, Applicants must show that differences in properties between the claimed invention and the cited art differ to such an extent that the difference is really unexpected (see MPEP § 716.02). It is important to keep in mind that “[a] showing of unexpected results must be based on evidence, not argument or speculation” (see MPEP § 2145). Where such evidence is available in the specification, provided in a 37 C.F.R. § 1.132 declaration, or both, it may be beneficial to argue unexpected results when traversing a rejection under 35 U.S.C. § 103. To view the post, use the navigation menu on the side of this site under Prosecution Topics 35 U.S.C. § 103 Secondary Indicia Unexpected Results, or click Here.

New Article 1/15/2010 - Ex parte Gutta: a New Test for Evaluating the Patentability of Algorithms

On December 21, 2009, the Board of Patent Appeals and Interferences (BPAI) issued a precedential decision in Ex parte Gutta, which pertains to the patentability of algorithms. The decision created a two prong test for evaluating whether practical applications of algorithms recite statutory subject matter. Attorney David Moore has prepared an excellent synopsis of the case. To view the post, use the navigation menu on the side of this site under Articles Algorithm Patentability, or click Here.