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 CLE webinar with Q&A
This CLE webinar 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.
Outline
- Evaluating obviousness
- Lessons from the CCPA and early Federal Circuit decisions
- In re Papesch
- In re Lunsford
- In re May
- In re Ruschig
- In re Chupp
- Gore v. Garlock
- In re Dillon (en banc)
- Leveraging CCPA decisions and early Federal Circuit decisions to avoid untoward 103 results
- Allergan v. Sandoz
- Novo Nordisk v. Caraco
- Galderma v. Tolmar
- BMS v. Teva
Benefits
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?
Faculty

Thomas L. Irving
Partner
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
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.
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Jill K. MacAlpine, Ph.D.
Partner
Finnegan Henderson Farabow Garrett & Dunner
Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling,... | Read More
Dr. MacAlpine practices patent procurement, due diligence investigations, opinion work, and client counseling, primarily in the chemical and pharmaceutical areas. She has extensive experience in handling patent matters before the U.S. Patent and Trademark Office (USPTO), including post-grant proceedings specifically IPRs, appeals, and oral hearings at the PTAB; drafting and prosecution of patent applications; reissue and reexamination proceedings; and interferences.
CloseMary Henninger, Ph.D.
Finnegan Henderson Farabow Garrett & Dunner
Dr. Henninger's practice focuses on litigation, strategic counseling, patent prosecution, and post grant... | Read More
Dr. Henninger's practice focuses on litigation, strategic counseling, patent prosecution, and post grant proceedings before the U.S. Patent and Trademark Office (USPTO) relating to biotechnology, pharmaceuticals, chemicals, and medical devices. She also advises clients regarding strategic patent portfolio management and patent prosecution, prepares opinions, and practices before the USPTO in post-grant proceedings.
CloseDeborah 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
Ms. Herzfeld focuses her practice on patent prosecution and counseling work, with an emphasis on chemical subject matter such as cosmetics, pharmaceuticals, biofuels, petroleum based products and catalyst technologies, as well as medical devices. Her client counseling experience includes freedom-to-operate, patentability, validity, and infringement opinion letters, portfolio and due diligence analysis.
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