April 7, 2013
Steve Morsa filed a patent claiming benefits processing. The PTO rejected over prior art, first arguing anticipation; then, when that deficiency was pointed out, hand-waving obviousness. Morsa made cogent, reasonably undeniable arguments, based on evidence, that the prior art used was not in fact prior art - that it was published nearly two years later. Morsa argued that the supposed prior art wasn't enabling, nor a solid basis for obviousness. The PTO didn't care a whit for any of it. The Board granted a rehearing only to pile on new grounds of rejection, without allowing Morsa any opportunity whatsoever to refute the rejections. On appeal, a CAFC panel didn't bother to examine the facts, nor follow the law. Largely ignorning Morsa's arguments, the CAFC rubber-stamped the PTO. The only issue that caught the CAFC's attention was the examiner dismissing Morsa's prior art enablement argument by saying the he had failed to file any expert declartion or affidavit in support. That odious requirement went too far. "We see no reason to require such submissions in all cases," the CAFC panel opined. "Here, Morsa identified specific, concrete reasons why he believed the short press release at issue was not enabling, and the Board and the examiner failed to address these arguments." For this a partial remand, though to moot point - only to clean a smudge on the claims' death warrant. The claims were damned over an unsupported conjecture of obviousness. One more chip on the pile exposing the fundamentally lawless process of caprice by the U.S. patent office and at the CAFC. (CAFC 2012-1609)
April 4, 2013
In Saffran v. Johnson & Johnson, the CAFC (2012-1043) satisfied its plutocratic bias, relieving J&J of a pesky infringement by narrowing claim construction from that emanating from esteemed Judge T. John Ward in the Eastern District of Texas. The interesting facet in this case was a reminder that relying upon means-plus-function claim language is always fraught with the danger of inadequate disclosure. "'[a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function.' Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009). Under § 112, ¶ 6, the question is not what structures a person of ordinary skill in the art would know are capable of performing a given function, but what structures are specifically disclosed and tied to that function in the specification."