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Eleven easy pieces for obviousness under 103?

By Lawrence B. Ebert, Esq.

Patent Docs noted that Bruce Kisliuk (Group Director of Technology Center 1600 (Biotechnology and Organic Chemisry)) stated that TC 1600 examiners were being taught to analyze the issue obviousness using eleven key cases as tools. The eleven cases are:

1. Pharmastem Therapeutics, Inc. v. Viacell, Inc. (Fed. Cir. 2007)
2. Pfizer, Inc. v. Apotex, Inc. (Fed. Cir. 2007)
3. Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd. (Fed. Cir. 2007)
4. McNeil-PPC, Inc. v. Perrigo, Co. (S.D.N.Y. 2007);
5. In re Omeprazole Patent Litigation (S.D.N.Y. 2007);
6. Ex parte Kubin (B.P.A.I. 2007)
7. In re Sullivan (Fed. Cir. 2007)
8. Daiichi Sankyo Co. v. Apotex, Inc. (Fed. Cir. 2007)
9. Aventis Pharma Deutschland GmbH v. Lupin, Ltd. (Fed. Cir. 2007)
10. Forest Labs., Inc. v. Ivax Pharm., Inc. (Fed. Cir. 2007)
11. Syngenta Seeds, Inc. v. Monsanto Co. (D. Del. 2004)

Patent Docs also noted: When asked when he [Kisliuk] expected the Court to reach a decision [in Tafas v. Dudas on continuing applications], Mr. Kisliuk conceded that he knew little more than the conference attendees, but stated that "insiders" were thinking the Court would announce its decision in about a month from the date of the hearing (February 8th). If his prediction holds true, patent attorneys and applicants could see a decision by the end of this week.

**Separately, Patently-O notes that the BPAI affirmance rate [between Feb. 07 and Feb. 08] for TC 1600 was 59% but for TC 1700 (Chemical and Materials Engineering) was 68%. Patently-O also noted: Almost 80% of [BPAI] decisions involved a discussion of nonobviousness and 30 U.S.C. 103(a). Unfortunately for patent applicants, nonobviousness decisions were also the most difficult for applicants to win. In my study, decisions involving Section 103(a) were affirmed 63% of the time.

Full post as published by IPBiz on March 04, 2008 (boomark / email).