Section 103 and Obviousness: Capitalizing on CCPA and Early Federal Circuit Precedent

Strategies for Withstanding Obviousness Rejections and Attacks on Patent Validity and Patentability

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Tuesday, September 16, 2014

Recorded event now available

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Course Materials

This CLE course will provide guidance to patent counsel on leveraging decisions by the Court of Customs and Patent Appeals (CCPA) and the Federal Circuit in the application of the Section 103 obviousness standard. The panel will examine lessons learned through CCPA and early Federal Circuit decisions and offer strategies for evaluating obviousness, handling evidence and overcoming assertions of unpatentability.


Recent Federal Circuit patent decisions, such as Allergan, Novo Nordisk, Galderma, and BMS, demonstrate that some of the lessons from earlier Section 103 pharmaceutical and chemical decisions by the CCPA may have fallen by the wayside. The CCPA developed a rich body of obviousness jurisprudence, which the Federal Circuit adopted as binding precedent.

CCPA Section 103 jurisprudence provides a treasure-trove of arguments for practitioners prosecuting and litigating patents in the face of assertions of unpatentability during ex parte prosecution and AIA’s post grant proceedings involving the Patent Trial and Appeal Board (PTAB), as well as invalidity in the district courts and the International Trade Commission.

In assessing and determining obviousness, the CCPA makes clear that all relevant evidence must be considered. Counsel can draw on CCPA cases for guidance in handling such evidence and in overcoming the negative effects of contemporary Federal Circuit decisions. The CCPA and early Federal Circuit decisions also give detailed guidance in assessing whether the USPTO or PTAB has established a proper prima facie case of obviousness.

When applying the statutory obviousness standard, it is imperative that patent counsel understand and heed the lessons of these cases to avoid committing missteps, to challenge, when appropriate, a prima facie case of obviousness, and, in the right circumstances, to base obviousness decisions on all available evidence. That evidence may go to showing there is no prima facie case of obviousness and/or that any such case is rebutted.

Listen as our authoritative panel of U.S. patent attorneys discusses how practitioners should evaluate obviousness and examines the lessons provided by selected CCPA and early Federal Circuit decisions, as well as by the recent “Paradise Lost” 103 Federal Circuit decisions mentioned above where those lessons are often overlooked. The panel will offer strategies to leverage those C.C.P.A. and early Federal Circuit decisions to avoid re-making old mistakes.



  1. Evaluating obviousness
  2. Lessons from the CCPA and early Federal Circuit decisions
    1. In re Papesch
    2. In re Lunsford
    3. In re May
    4. In re Ruschig
    5. In re Chupp
    6. Gore v. Garlock
    7. In re Dillon (en banc)
  3. Leveraging CCPA decisions and early Federal Circuit decisions to avoid untoward 103 results
    1. Allergan v. Sandoz
    2. Novo Nordisk v. Caraco
    3. Galderma v. Tolmar
    4. BMS v. Teva


The panel will review these and other key questions:

  • How is evidence of unexpected properties by a claimed invention evaluated?
  • What lessons can patent counsel draw from CCPA decisions when applying the statutory obviousness standard?
  • What steps should patent counsel take going forward to avoid making the mistakes of the past?


Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

MacAlpine, Jill
Jill K. MacAlpine, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,...  |  Read More

Mary Henninger, Ph.D.
Mary Henninger, Ph.D.

Finnegan Henderson Farabow Garrett & Dunner

Dr. Henninger's practice focuses on litigation, strategic counseling, patent prosecution, and post grant...  |  Read More

Deborah M. Herzfeld
Deborah M. Herzfeld

Of Counsel
Finnegan Henderson Farabow Garrett & Dunner

Ms. Herzfeld focuses her practice on patent prosecution and counseling work, with an emphasis on chemical subject...  |  Read More

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