Search Results for: 【米国】米国特許商標庁(USPTO)が新たな審査基準を発表しました

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【米国】米国特許商標庁(USPTO)が新たな審査基準を発表しました

USPTOは2010年9月1日付の連邦公報(Federal Register)において、米国特許法(35U.S.C.)103条に規定されている非自明性に関する審査基準ガイドラインの改訂版を発表しました。   2007年のKSR Int’l Co. v. Teleflex Inc.事件に関する最高裁判決以降のCAFC(Court of Appeals for the Federal Circuit:米国連邦巡回控訴裁判所)において出された最近の判例と整合性をとることを目的として審査基準が改訂されています。 Case Teaching point Combining Prior Art Elements In re Omeprazole Patent Litigation,536 F.3d 1361 (Fed. Cir. 2008).   Even where a general method that could have been applied to make the claimed product was known and within the level of skill of the ordinary artisan, the claim may nevertheless be nonobvious if the problem which had suggested use of the method had been previously unknown. Crocs, Inc. v. U.S. Int’l Trade Comm’n., 598 F.3d 1294 (Fed.Cir. 2010). A claimed combination of prior art elements may be nonobvious where the prior art teaches away from the claimed combination and the combination yields more than predictable results. Sundance, Inc. v. DeMonte FabricatingLtd., 550 F.3d 1356 (Fed.Cir. 2008). A claimed invention is likely to be obvious if it is a combination of known prior art elements that would reasonably have been expected to maintain their respective properties or functions after they have been combined. Ecolab, Inc. v. FMC Corp., 569F.3d 1335 (Fed. Cir. 2009). A combination of known elements would have been prima facie obvious if an ordinarily skilled artisan would have recognized an apparent reason to combine those elements and would have known how todo so. Wyers v. Master Lock Co., No.2009-1412, –F.3d–, 2010 WL2901839 (Fed. Cir. July 22, 2010). The scope of analogous art is to be construed broadly and includes references that are reasonably pertinent to the problem that the inventor was trying to solve. Common sense may be used to support a legal conclusion of obviousness so long as it is explained with sufficient reasoning. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d1314 (Fed. Cir. 2009). Predictability as discussed in KSR encompasses the expectation that prior art elements are capable of being combined, as well as the expectation that the combination would have worked for its intended purpose. An inference that a claimed combination would not have been obvious is especially strong where the prior art’s teachings undermine the very reason being proffered as to why a person of ordinary skill would have combined the known elements. Substituting One Known Element for Another In re ICON Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007). When determining whether a reference in a different field of endeavor may be used to support a case of obviousness (i.e., is analogous), it is necessary…
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