Archive for October, 2013

Supreme Court Announcement of AMP v. Myriad

Sunday, October 27th, 2013

At the beginning of each Supreme Court term, the Court releases the recordings of the announcements of Court decisions from the previous term.  Here is the announcement from back in June of the decision in Ass’n for Molecular Pathology v. Myriad, 133 S. Ct. 2107 (2013):  [Listen].

Rendering prior art inoperable for its intended purpose

Wednesday, October 16th, 2013

Patent prosecutors are familiar with MPEP sections 2143.01 (V) and 2143.01(VI).  Those sections recite:


If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) (Claimed device was a blood filter assembly for use during medical procedures wherein both the inlet and outlet for the blood were located at the bottom end of the filter assembly, and wherein a gas vent was present at the top of the filter assembly. The prior art reference taught a liquid strainer for removing dirt and water from gasoline and other light oils wherein the inlet and outlet were at the top of the device, and wherein a pet-cock (stopcock) was located at the bottom of the device for periodically removing the collected dirt and water. The reference further taught that the separation is assisted by gravity. The Board concluded the claims were prima facie obvious, reasoning that it would have been obvious to turn the reference device upside down. The court reversed, finding that if the prior art device was turned upside down it would be inoperable for its intended purpose because the gasoline to be filtered would be trapped at the top, the water and heavier oils sought to be separated would flow out of the outlet instead of the purified gasoline, and the screen would become clogged.).

“Although statements limiting the function or capability of a prior art device require fair consideration, simplicity of the prior art is rarely a characteristic that weighs against obviousness of a more complicated device with added function.” In re Dance, 160 F.3d 1339, 1344, 48 USPQ2d 1635, 1638 (Fed. Cir. 1998) (Court held that claimed catheter for removing obstruction in blood vessels would have been obvious in view of a first reference which taught all of the claimed elements except for a “means for recovering fluid and debris” in combination with a second reference describing a catheter including that means. The court agreed that the first reference, which stressed simplicity of structure and taught emulsification of the debris, did not teach away from the addition of a channel for the recovery of the debris.).


If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 123 USPQ 349 (CCPA 1959) (Claims were directed to an oil seal comprising a bore engaging portion with outwardly biased resilient spring fingers inserted in a resilient sealing member. The primary reference relied upon in a rejection based on a combination of references disclosed an oil seal wherein the bore engaging portion was reinforced by a cylindrical sheet metal casing. Patentee taught the device required rigidity for operation, whereas the claimed invention required resiliency. The court reversed the rejection holding the “suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principle under which the [primary reference] construction was designed to operate.” 270 F.2d at 813, 123 USPQ at 352.).

Surprisingly, the issues of (1) whether a proposed combination of references renders one of the references inoperable for its intended purpose and  (2) whether a proposed combination of references changes the principle of operation of a reference don’t arise that often at oral argument at the Federal Circuit.  In the recent Rambus v. Rea case, however, these issues were discussed.  You can listen to the discussion here: [Listen].

You can listen to the entire oral argument here:  [Oral Argument].

You can read the court’s opinion here:  [Opinion].

Accenture v. Guidewire

Monday, October 14th, 2013

The oral argument in ACCENTURE GLOBAL SERVICES v. GUIDEWIRE SOFTWARE, INC., No. 2011-1486 (Fed. Cir. Sept. 5, 2013) would be of interest to those of you who follow section 101 issues as they relate to business methods and software.

I found the exchanges between Chief Judge Rader and Mark Lemley (arguing on behalf of Guidewire and against the patent eligibility of the claim at issue) to be the most interesting parts of the oral argument.  At the outset, Professor Lemley acknowledged that software is eligible for patenting: [Listen].  The discussion then moved on to whether high level functionality of software is protected by patent law.  I couldn’t help but wonder if Judge Rader’s comments at this stage were a criticism of Professor Lemley’s article “Software Patents and the Return of Functional Claiming“:  [Listen].  Judge Rader later circled back to inquire whether in view of Guidewire’s position all software would be patent ineligible: [Listen].

You can listen to the entire oral argument here: [Oral Argument].

You can read the court’s opinion here: [Opinion].