In addition to my previous post, Tom Irving's notes also mentioned how it is "still best to destroy, rather than rebut, a prima facie case of obviousness". This statement means in a patent appeal, it is better for the court to attempt to prove the patent claims, which appear to be obvious, are indeed obvious rather than not. On the other hand, in argument, it is better to attack the "premise of rejection rather than amending claim important in view of prosecution history estoppel and litigation implications". That sounds complicated, but it means it is better not to make a compromise of amending the claim to accommodate the rejection rationale unless necessary.
On the judges' side, to substantiate the rejection, we can check if the draft application spelled out everything relevant to the claims. If they did not reveal everything, they may be hiding the fact that the problem was known and that there was an obvious solution. Also, the application has to include the "starting point" prior art which kickstarted the invention's development, and we can access if it would lead to identifying the problem.
However, for the patentee, Irving states that there has to be some rational reasoning to support the conclusion, and thus it can be challenged if there is not. It would be crucial to show the claims were not obvious to try then, which we have discussed in class and in my other posts. Knowing how the two sides fight in a case will enable us to first draft an irrefutable patent claim.
Sources:
https://law.duke.edu/sites/default/files/centers/judicialstudies/patentlawintensive/wednesday_Irving-May_15_Dev_in_Non-Obviousness.pdf
On the judges' side, to substantiate the rejection, we can check if the draft application spelled out everything relevant to the claims. If they did not reveal everything, they may be hiding the fact that the problem was known and that there was an obvious solution. Also, the application has to include the "starting point" prior art which kickstarted the invention's development, and we can access if it would lead to identifying the problem.
However, for the patentee, Irving states that there has to be some rational reasoning to support the conclusion, and thus it can be challenged if there is not. It would be crucial to show the claims were not obvious to try then, which we have discussed in class and in my other posts. Knowing how the two sides fight in a case will enable us to first draft an irrefutable patent claim.
Sources:
https://law.duke.edu/sites/default/files/centers/judicialstudies/patentlawintensive/wednesday_Irving-May_15_Dev_in_Non-Obviousness.pdf
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