Obviousness Update in January 2018 MPEP Revision

An updated version of the Manual of Patent Examining Procedure (MPEP) was published in January 2018 and does make one noteworthy change regarding MPEP §2143.01V titled “The Proposed Modification Cannot Change the Principle of Operation of a Reference.”  This section has long stated that, “If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir.1984)”  The January 2018 publication provides two cases that temper the application of this rule: In re Urbanski, 809 F.3d 1237, 1244, 117USPQ2d 1499, 1504 (Fed. Cir. 2016) and Allied Erecting v. Genesis Attachments, 825 F.3d 1373,1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016). About 50 ex parte PTAB appeals cite In re Urbanski.  Many of those cites include the following quote: One of ordinary skill in the…

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