1. Prosecution Lunch
September 2010

2. Data Visualization Center:
Patent “Dashboard”
Data Visualization Center:
Access to pendency and operations data
1st OA pendency – Backlog
Annualized production – No. of examiners
Allowance rate – “Inventory Position”
Information updated monthly 

3. Dashboard—Rev ‘Em Up!

4. Examination Guidelines Update—Obviousness
2010 KSR Guidelines Update
75 Fed. Reg (
Follows up on 2007 KSR Guidelines
Reviews FC cases, provides “teaching points”

5. Examination Guidelines Update—Examples
Rationale: Combining Prior Art Elements
Claim may be nonobvious if art teaches away from combination and combination yields more than predictable results (Crocs, Inc. v. USITC)
Claim likely obvious if known elements would be expected to maintain respective properties, or if POSA would see reason to combine and would know how to do so (Sundance Inc. v. DeMonte Fabricating; Ecolab, Inc. v. FMC Corp.)
Predictability encompasses capability of being combined, expectation the combination will work (DePuy Spine v. Medtronic Sofamor Danek)

6. Examination Guidelines Update
Other Guideline Areas
Substituting One Element for Another
“Obvious to Try”
Per PTO: fear that few claims will survive under this rationale “unfounded” in light of recent cases
FC Cases on Consideration of Evidence

7. When is a Preamble a Limitation?
American Medical Systems, Inc. v. Biolitec, Inc. (FC Sept. 13, 2010)
Method “for photoselective vaporization of tissue”
Trial court: construes preamble as limiting
“Photoselective vaporization” is a “fundamental characteristic” of invention
Claim requires wavelength “highly absorptive in the tissue [and] only to a negligible degree by water”
Summary judgment for defendant

8. When is a Preamble a Limitation?
General principle: preamble is not limiting
Can limit if it recites essential structure or steps, or necessary to give “life, meaning, and vitality”
Not limiting if it is “merely duplicative” of elements in the body, or “merely gives a descriptive name” to the elements in the body
Here, preamble is such a descriptive name; it provides nothing extra over elements in body
Dissent: rule “that all preambles are limiting would make better sense and would better serve the interests of all concerned”

9. Prosecution Lunch
September 2010