Even as Guardian Queen Examiner, Athelia is not the highest authority. Above her sit the courts—first the Patent Trial and Appeal Board (PTAB), then the Court of Appeals for the Federal Circuit (CAFC), and at the apex, the Supreme Court of the United States.
These cases are binding precedents—rulings that Athelia must follow in every examination. When KSR declared that "common sense" and "predictable results" can support obviousness rejections, every examiner (including Athelia) gained new power to reject claims without needing explicit teaching in prior art. When Alice/Mayo established the two-step test for § 101 eligibility, abstract ideas became far easier to reject, devastating business method and software patents.
Supreme Court cases (highlighted in red borders) are the most powerful. They set the framework, the tests, the standards that govern all patent law:
KSR (§ 103 obviousness): Common sense, predictable results, obvious to try. The six KSR rationales are Athelia's toolkit for rejection.
Alice/Mayo (§ 101 eligibility): The two-step test. Abstract ideas, laws of nature, natural phenomena—all ineligible unless integrated into practical application or providing "significantly more."
eBay (remedies): Injunctions are not automatic. Four-factor equity test applies.
Federal Circuit cases (highlighted in blue borders) provide detailed application of Supreme Court principles. Ariad (written description), Therasense (inequitable conduct), Phillips (claim construction)—these cases fill in the gaps, showing how the high-level rules apply to specific fact patterns.
For the Patent Bar exam, you must know these cases cold. Not just the holdings, but the reasoning, the tests, the factors. The exam will present fact patterns requiring you to apply KSR rationales, Alice/Mayo framework, or eBay factors. Miss these, and you'll fail the exam.
These are the ancient laws binding Athelia's authority. Learn them. Master them. They are non-negotiable.
Obviousness analysis cannot be confined to rigid formulas. The TSM (teaching, suggestion, motivation) test is helpful but not exclusive. Common sense and ordinary innovation can support obviousness even without explicit teaching in prior art.
KSR allows common sense as rationale for combining references. Examiner can use "ordinary innovation," "predictable results," or "obvious to try" without needing explicit teaching. However, examiner must still provide some articulated reasoning - cannot just say "obvious" without explanation.
Made it easier for USPTO to reject claims as obvious. Applicants must show combination is NOT predictable, or argue secondary considerations (commercial success, long-felt need, failure of others).
Claims directed to abstract idea of intermediated settlement are patent-ineligible. Implementing abstract idea on generic computer does not transform it into patent-eligible subject matter. Applied Mayo two-step framework to computer-implemented inventions.
Abstract ideas: fundamental economic practices, methods of organizing human activity, mathematical concepts. Not enough: "apply it on computer" or "via Internet." Enough: improvement to computer functionality, particular machine, transformation of article to different state/thing.
Devastated business method and software patents. Claims must show technological improvement or solve technological problem, not just automate abstract idea on generic computer.
Permanent injunctions are not automatic upon finding infringement. Courts must apply traditional four-factor equity test. Rejected Federal Circuit's general rule that injunctions should issue absent exceptional circumstances.
Injunctions are NOT automatic. Courts have discretion. Particularly impacts non-practicing entities (NPEs/trolls) who may not suffer irreparable harm since they don't make/sell products. Competitor is more likely to get injunction than NPE.
Claims reciting natural correlation between drug metabolite levels and treatment efficacy are patent-ineligible. Merely instructing doctors to apply natural law (measure metabolite, adjust dosage) does not provide "significantly more" than law of nature itself.
Diagnostic methods often fail Mayo test. "Administering, determining, wherein" claim format (administer drug, measure result, adjust based on correlation) typically ineligible unless transformation or technological improvement present.
Machine-or-transformation test is important clue but not sole test for § 101 eligibility. Method of hedging risk in commodities trading is abstract idea and patent-ineligible. Business methods are not categorically excluded, but this claim was abstract.
Machine-or-transformation test: (1) Tied to particular machine, OR (2) Transforms article into different state/thing. This test is "important clue" but not exclusive test. Business methods can be patentable if not abstract.
Prosecution history estoppel arises when amendment narrows claim to overcome prior art or comply with § 112. Creates presumption that patentee surrendered all territory between original and amended claim. Presumption is rebuttable but strong.
Narrowing amendments create estoppel. Patent owner cannot later recapture surrendered scope through doctrine of equivalents. Can rebut by showing: (1) rationale bears no relation to equivalent, (2) couldn't reasonably describe equivalent, or (3) other reason amendment wasn't surrender.
Claims must be read in light of specification and prosecution history (intrinsic evidence). Specification is best guide to claim meaning. Dictionaries and extrinsic evidence are less reliable than intrinsic evidence.
For Patent Bar: Use broadest reasonable interpretation (BRI) during prosecution, not Phillips standard. Phillips applies in litigation. BRI means broadest meaning consistent with specification.
Enablement requires disclosure sufficient for PHOSITA to make and use invention without undue experimentation. "Undue" is qualitative, not quantitative. Some experimentation is permitted.
Enablement is as of filing date. Specification must enable full scope of claims. If claims are broad (genus), enablement must cover entire genus, not just specific embodiments.
Written description is separate requirement from enablement. Must show possession of claimed invention as of filing date. Test: Would PHOSITA reading specification reasonably conclude applicant possessed claimed invention?
Written description vs. enablement: WD asks "did you have it?" Enablement asks "can others make it?" Original claims get presumption of WD support. New claims or amendments must have clear support in original disclosure.
Examiner has initial burden to establish prima facie case of obviousness. If established, burden shifts to applicant to show nonobviousness (error in rejection, unexpected results, secondary considerations).
Prima facie case requires: (1) identify prior art teachings, (2) explain differences from claim, (3) articulate reasoning for why PHOSITA would combine teachings. Applicant can rebut with secondary considerations (commercial success, long-felt need).
Prior art "teaches away" when it criticizes, discourages, or otherwise discourages the claimed solution. Mere disclosure of alternative does not teach away. Must actually discourage or lead away from claimed invention.
Teaching away is strong evidence of nonobviousness. But reference that merely shows alternative path (without discouraging claimed path) does NOT teach away. Must affirmatively discourage or criticize claimed approach.
Inherent anticipation requires that missing element is necessarily present in prior art, not that it may be or probably is present. Inherency cannot be established by probabilities or possibilities.
For inherency: element must be necessarily present, even if not recognized. If it's only sometimes present or probably present, NOT inherent. Natural result flowing from explicit disclosure can be inherent.
Inequitable conduct requires but-for materiality (patent would not have issued but for misrepresentation/omission) AND specific intent to deceive. Both elements must be proven by clear and convincing evidence. Raised standard significantly.
Post-Therasense, inequitable conduct is harder to prove. Not enough to show "should have disclosed" - must show information was but-for material AND applicant specifically intended to deceive USPTO. High bar for both prongs.