Headquartered within steps of the USPTO with an affiliate office in Tokyo, Oblon is one of the largest law firms in the United States focused exclusively on intellectual property law.
1968
Norman Oblon with Stanley Fisher and Marvin Spivak launched what was to become Oblon, McClelland, Maier & Neustadt, LLP, one of the nation's leading full-service intellectual property law firms.
Outside the US, we service companies based in Japan, France, Germany, Italy, Saudi Arabia, and farther corners of the world. Our culturally aware attorneys speak many languages, including Japanese, French, German, Mandarin, Korean, Russian, Arabic, Farsi, Chinese.
Oblon's professionals provide industry-leading IP legal services to many of the world's most admired innovators and brands.
From the minute you walk through our doors, you'll become a valuable part of a team that fosters a culture of innovation, client service and collegiality.
The United States Patent and Trademark Office (USPTO) issued final rules implementing the inventor's oath or declaration provisions of the America Invents Act (AIA) on August 14, 2012.
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In Ex parte Sawada et al. (Appeal 2011-007934; Application serial no. 09/834,410), the Board reversed an obviousness rejection based on a combination of prior art because the Examiner did not adequately explain why it would have been obvious to substitute substances that had different functions in the respective drug formulations.
The claim at issue was directed to a timed-release compression-coated solid composition and recited an outer layer comprising polyethylene oxide. The primary reference, Giannini, lacked teaching of such an outer layer comprised of polyethylene oxide, and instead described a composition having a coating comprising ethylcellulose. The Examiner relied on the secondary reference, Sako, describing a drug coating comprising polyethylene oxide, and took the position that it would have been obvious to substitute ethylcellulose of Giannini with polyethylene oxide as taught by Sako.
The Board found that “the Examiner has not adequately explained why one of skill in the art would have substituted the polyethylene oxide of Sako for the ethylcellulose of Giannini,” noting that the two substances had different functions in the respective formulations. Specifically, the Board explained that “the ethylcellulose in Giannini’s granules was intended to be a part of a taste-mask coating for an immediate release preparation, while the polyethylene oxide of Sako is combined with the active agent and [polyethylene glycol] so that a sustained release gel encompassing the active agent is formed upon administration.”
According to the Board, there was another flaw in the obviousness rejection. Sako described a homogeneous mixture of drug, hydrophilic base and hydrogel-forming polymer, but the Examiner incorrectly found that Sako disclosed a drug core tablet coated with a mixture of hydrophilic base and hydrogel-forming polymer.