How has the Federal Circuit’s decisions in Ochiai and Brouwer affected the need for pre-AIA 35 U.S.C. 103(b)?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The Federal Circuit’s decisions in In re Ochiai and In re Brouwer have significantly impacted the need for relying on pre-AIA 35 U.S.C. 103(b). The MPEP notes:

In view of the Federal Circuit’s decisions in Ochiai and Brouwer, an applicant’s need to rely upon pre-AIA 35 U.S.C. 103(b) should be rare.

These cases addressed whether an otherwise conventional process could be patented if it were limited to making or using a nonobvious product. The decisions generally made it easier to obtain patents on processes using or making novel and nonobvious products without needing to rely on the specific provisions of pre-AIA 35 U.S.C. 103(b).

For a more detailed discussion of these cases, refer to MPEP § 2116.01.