More Schooling for Petitioners on Obviousness: Details Needed

In Integrated Global Concepts, Inc. v. Advanced Messaging Technologies, Inc., 2014-01027, Paper 16, (December 22, 2014) the Board declined to institute inter partes review of claims 13–20, 25, and 36 (the “challenged claims”) of U.S. Patent No. 6,020,980.  In addressing the merits of the petition the Board quoted the Petition that the references “are clearly properly combinable and are representative of the obvious body of knowledge well within the grasp of the person of ordinary skill in the art in the field of the ’980 Patent.” The Board, observed that “This statement, by itself, does not provide any rationale for combining the cited teachings and certainly does not provide a sufficiently “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” The Board complained that “Petitioner does not explain persuasively how or why a person of ordinary skill would have combined the cited teachings. The Board acknowledged that the Petition was supported by an expert declaration, but said the declaration, like the Petition, “only offers conclusions that it would have been obvious to combine certain teachings from each of the references” and does not provide any support for the conclusions with persuasive explanation or citation to objective evidence.

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About Bryan Wheelock

Education
J.D., Washington University in St. Louis
B.S.E. in Mechanical Engineering, Duke University

Bryan Wheelock’s practice includes preparation and prosecution of patent and trademark applications and drafting of intellectual property agreements, including non-compete agreements. He has brought and defended lawsuits in federal and state courts relating to intellectual property and has participated in seizures of counterfeit and infringing goods.

Bryan prepares and prosecutes U.S. and foreign patent applications for medical devices, mechanical and electromechanical devices, manufacturing machinery and processes, metal alloys and other materials. He also does a substantial amount of patentability searching, trademark availability searching and patent and trademark infringement studies.

In addition to his practice at Harness Dickey, Bryan is an Adjunct Professor at Washington University School of Law and Washington University School of Engineering.