The Federal Circuit has recently been issuing Rule 36 opinions with prodigious fecundity.¹  However, there is still plenty of intriguing commentary in the oral arguments underlying these terse judgments.

One interesting exchange occurred recently between Judge Moore and the associate solicitor for the PTO in the In re Rackman appeal.  Judge Moore was exploring when it is acceptable for the PTO to assert that it is obvious to modify a device in a prior art reference by adding software to it if the rationale that the PTO gives is simply to increase the functionality of the device.  [Listen]  Judge Moore seemed concerned about the effect that this could have on the patentability of future software inventions.

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

You can read the court’s opinion, such as it is, here: [Read].

¹ I’m not really well-read enough to use phrases like “prodigious fecundity;” but, I read the following Learned Hand quote today and couldn’t resist:  “[A]s the law stands, the inventor must accept the position of a mythically omniscient worker in his chosen field. As the arts proliferate with prodigious fecundity, his lot is an increasingly hard one.” Merit Mfg. Co. v. Hero Mfg. Co., 185 F.2d 350, 352 (2d Cir. 1950).  Which begs the question, “How would Learned Hand have decided Bilski v. Kappos?”

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