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« Court Report | Main | Plaintiffs (Again) File Certiorari Petition in Myriad Case »

September 24, 2012


It is an ongoing problem that neither the CAFC nor patent attorneys in general seem well versed in distinguishing dicta from holding.

" the Droge applicants conceded that the combination of the references disclosed all the elements of their claims, but contended that the skilled worker would not have had a reasonable expectation of success that the mutant enzymes that worked in prokaryotic cells would also work in eukaryotic cells and thus their claims were non-obvious. This assertion was supported by a Rule 132 declaration by inventor Droge,"

Always good for a laugh when the inventor chimes in.

Having spent a good portion of my pre-law career studying this field, it's pretty clear that the USPTO and the Federal Circuit got it right. Well done. This case is well-reasoned and doesn't break any new ground, in my opinion.

Dear Keep:

Agreed. This is line drawing by the Office, and under the facts presented the level of predictability seems high enough to pass muster for an obviousness determination. And my point is that this would have been the case pre- or post-KSR.

Thanks for the comment.

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