Not So Common Sense? Reliance on Common Sense to Establish Obviousness
By: Albert Liou – A common defect when relying on “common sense” is the failure to provide explicit and clear reasoning with some rational underpinning why common sense compels a finding of obviousness. The decision reminds Practitioners that “common sense” is reached by explicit reasoning; it’s not an explanation in and of itself.
PTO’s Rehearing Petition in Bosch: Signaling Future Rulemaking After Aqua Products?
By: Jason Garr and Emily Tait – The PTO petitioned for rehearing of Bosch Auto seeking clarification from the Federal Circuit of whether § 316(e) is ambiguous as to the burden of persuasion, as the Court held in Aqua Products, which would leave the door open to future rulemaking to return the burden of proof to the Patent Owner.
Patent Prosecutors Beware: Earlier Publication Anticipates Broad Claims of Continuing Application
By: Jennifer J. Chheda, Ph.D. – Prior publication of a parent application anticipates a continuation application where continuing application’s claim terms encompass subject matter for which there was no written description such that the claims were not entitled to the continuing application’s claim to priority.
The PTAB Chats Designs: And Now, for Something Completely Different
By: Jaime Choi, Tracy Stitt, and John Evans – During PTAB’s Boardside Chat on February 1, 2018, a panel discussed appeals and trials relating to design patents, and touched on: 35 U.S.C. § 171, subject matter that may be claimed in a design patent; application of the statutory requires of §§ 102, 103, and 112 to designs; and, the “ordinary designer” standard.
Court Grants Rehearing In Light Of Wi-Fi One
By: Amanda Leckman and Carl Kukkonen – A Federal Circuit panel has granted Click-to-Call’s request for rehearing in light of the Federal Circuit’s en banc decision in Wi-Fi One that PTAB time-bar determinations under Section 315(b) are reviewable.