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Patent prosecution in light of In Re: Klein

In a recent appeal of a United States Patent Office (“USPTO”) final rejection of a claim, the Court of Appeals for the Federal Circuit enunciated a rule that would limit the ability of patent Examiners to rely on disparate prior art references as the basis for an obviousness rejection when they could not be shown to be pertinent to the problem the inventor sought to solve. In re Klein, No. 10-1411, 2011 WL 2178134 (Fed. Cir. June 6, 2011).

Specifically, the Federal Circuit sided with the patent applicant and rejected the USPTO Board of Patent Appeals and Interference’s obviousness conclusions. The court held that none of the five cited prior art references could be considered “analogous art” because they were relevant to only a portion of the problem to be solved by inventor Klein’s invention, and were therefore excluded from the court’s obviousness analysis. Although arguably contrary to conventional patent prosecution practices, the holding in Klein may provide incentive for prosecutors to include, in limited conditions, a statement of purpose in the independent claims.

Read the rest of the analysis.

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