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Prosecution Lunch

Prosecution Lunch. September 2010. Patent “Dashboard”. Data Visualization Center: www.uspto.gov/dashboards/patents/main.dashxml Access to pendency and operations data 1st OA pendency – Backlog Annualized production – No. of examiners Allowance rate – “Inventory Position”

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Prosecution Lunch

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  1. Prosecution Lunch September 2010

  2. Patent “Dashboard” • Data Visualization Center: www.uspto.gov/dashboards/patents/main.dashxml • Access to pendency and operations data • 1st OA pendency – Backlog • Annualized production – No. of examiners • Allowance rate – “Inventory Position” • Information updated monthly 

  3. Dashboard—Rev ‘Em Up!

  4. Examination Guidelines Update—Obviousness • 2010 KSR Guidelines Update • 75 Fed. Reg. 53643 (www.uspto.gov/patents/law/notices/2010.jsp) • Follows up on 2007 KSR Guidelines • Reviews FC cases, provides “teaching points”

  5. Examination Guidelines Update—Examples • Rationale: Combining Prior Art Elements • Claim may be nonobvious if art teaches away from combination and combination yields more than predictable results (Crocs, Inc. v. USITC) • Claim likely obvious if known elements would be expected to maintain respective properties, or if POSA would see reason to combine and would know how to do so (Sundance Inc. v. DeMonte Fabricating; Ecolab, Inc. v. FMC Corp.) • Predictability encompasses capability of being combined, expectation the combination will work (DePuy Spine v. Medtronic Sofamor Danek)

  6. Examination Guidelines Update Other Guideline Areas • Substituting One Element for Another • “Obvious to Try” • Per PTO: fear that few claims will survive under this rationale “unfounded” in light of recent cases • FC Cases on Consideration of Evidence

  7. When is a Preamble a Limitation? American Medical Systems, Inc. v. Biolitec, Inc. (FC Sept. 13, 2010) • Method “for photoselective vaporization of tissue” • Trial court: construes preamble as limiting • “Photoselective vaporization” is a “fundamental characteristic” of invention • Claim requires wavelength “highly absorptive in the tissue . . . [and] only to a negligible degree by water” • Summary judgment for defendant

  8. When is a Preamble a Limitation? • General principle: preamble is not limiting • Can limit if it recites essential structure or steps, or necessary to give “life, meaning, and vitality” • Not limiting if it is “merely duplicative” of elements in the body, or “merely gives a descriptive name” to the elements in the body • Here, preamble is such a descriptive name; it provides nothing extra over elements in body • Dissent: rule “that all preambles are limiting would make better sense and would better serve the interests of all concerned”

  9. Prosecution Lunch September 2010

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