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It seems like only yesterday that the United States Patent and Trademark Office (USPTO) issued U.S. Pat. No. 9,000,000 for a “windshield washer conditioner” that collects and conditions rainwater or dew from a windshield for use as washer fluid.  And now we’ve surpassed 10,000,000!  If patents were Wonka Bars, the […]

n Rovalma S.A. v. Böhler-Edelstahl GmbH & Co. KG (decided May 11, 2017), the Patent Trial and Appeal Board (PTAB) recently had trouble with “phonons” and struggled to adequately explain why Rovalma’s phonon-laced process would have been obvious. The Federal Circuit concluded that the lack of a reasoned explanation warranted a remand. The decision continues a trend, discussed in our earlier article (insert link), in which the Federal Circuit insists on reasoned explanations rather than conclusory assertions of obviousness.

After her strange trip down the rabbit hole, we might all be willing to cut Alice some slack for being confused in her response to the Caterpillar’s demand, “Explain yourself!” Lately, however, the Federal Circuit has become increasingly strict with the USPTO Board and examiners when they fail to explain adequately the basis for an obviousness ruling. In fact, a splash of recent decisions makes me wonder if this is mere ripple in Section 103 jurisprudence or a welcome wave of change.

Like most other high-school students, I struggled with SAT vocabulary. Let’s face it, even voracious readers rarely encounter “susurration,” “verisimilitude,” or “eleemosynary.” Apparently, however, no 10th grader could hope to enter college without understanding them. I therefore cringed to read “conflate” in the Federal Circuit’s decision in Intelligent Bio-Systems v. Illumina Cambridge (decided May 9, 2016). According to Webster’s (not so) New Collegiate Dictionary (1977), “conflate” can mean “to bring together” or “fuse.” However, it can also mean “to confuse.” Yet another meaning is “to combine (as two readings of a text) into a composite whole.” Confused, I turned to Black’s Law Dictionary, Sixth Edition (1990), but alas, “conflate” appears to have no special meaning in the law.

I fondly recall the day we splurged to upgrade our “starter” shredder to a Fellowes P560C-2 cross-cut model. While Starter jammed with more than a page or two and gagged on a single staple, the P560C-2 gulps pages at a time and devours staples without indigestion. And although it will overheat during an end-of-year purge, the Fellowes shredder has served me well. That explains my disappointment in seeing the Federal Circuit quash a Board finding of non-obviousness in ACCO Brands Corp. v. Fellowes, Inc. (decided February 22, 2016).

The Supreme Court’s decision altering the standard for claim indefiniteness in Nautilus Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), arrived too late to rescue Nova Chemicals from the jaws of Dow Chemical’s patent infringement suit related to linear low density ethylene copolymers. However, Nova enjoyed a measure of revenge when the Federal Circuit reversed the award to Dow of supplemental damages for Nova’s activities during January 2010 through October 2011. The court decided the case correctly, but its rationale tilts too far in Dow’s favor. The decision reminded me of another odd figure in an earlier Dow polyethylene patent.

As you may have heard, the United States Patent and Trademark Office just issued U.S. 9,000,000, assigned to WiperFill Holdings, for a “windshield washer conditioner” that collects and conditions rainwater or dew from a windshield for use as washer fluid. What you may not realize is that the Patent Office hand-selects certain patents to be recognized as a “milestone millionth.” In 2011, Second Sight Medical Products received U.S. 8,000,000 for a visual prosthesis that enhances visual perception for people who have gone blind due to outer retinal degeneration. And in 2006, U.S. 7,000,000 was awarded to a DuPont inventor for biodegradable polysaccharide fibers useful for textiles.

My mother stood 4’ 10” tall, tipped the scales at 98 pounds, and was a stickler for correct grammar. She bristled when anyone uttered “I ain’t going,” “He’s taller than me,” or “Are youse goin’ down the shore this year?” And she would have agreed with Judge Newman (and me) that the majority erred in its March 16, 2015 ruling in Enzo Biochem Inc. v. Applera Corp.

In Teva v. Sandoz, Justice Breyer starts thirteen sentences with “And” and six with “But.” Justice Thomas, in the dissenting opinion, counters by starting thirteen sentences with “But” and four with “And.” What makes this rhetorical device so effective for each writer?

When I was your age, and Pluto was a planet, “obvious to try” was not the standard for evaluating patentability under 35 USC § 103. In KSR v. Teleflex, the US Supreme Court qualified this by rejecting the Federal Circuit’s “TSM” test in favor of a more flexible standard. Thereafter, a skilled person might respond to a “design need” or “market pressure” to solve a problem having only a “finite number of predictable solutions.” Such an application of “common sense” would be unpatentable and “obvious to try.” Perhaps your patience has also worn thin in considering the possibilities?

Recent Federal Circuit decisions continue to shape the law of obviousness and the meaning of “obvious to try.” Here are three examples: