PTAB.US: Decisions of PTAB Patent Trial and Appeal Board Updated Daily.

Friday, July 10, 2009


1700 Chemical & Materials Engineering
Toner for electrophotography
Matsumura et al. US 2004/0132920 A1 (8 July 2004)
So-called "product-by-process" limitations define or characterize a product by reciting the way the product is made. Claims containing such limitations are interpreted during prosecution as being anticipated by or obvious in view of any product, no matter how made, that is the same as any product made by a process within the scope of the steps recited in the claim. See, e.g., In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ("[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.") (citations omitted).

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Container caps and containers
Tilp US 3,836,044 Sep. 17, 1974
Helms US
4,211,336 Jul. 8, 1980
Fernandes US
4,883,194 Nov. 28, 1989
Roth US
5,085,339 Feb. 4, 1992
Capo US
5,542,598 Aug. 6, 1996
“When a piece of prior art ‘suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant’ the piece of prior art is said to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo, S.L.¸437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). In Medichem, however, the Federal Circuit further explained: [O]bviousness must be determined in light of all the facts, and there is no rule that a single reference that teaches away will mandate a finding of nonobviousness. Likewise, a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000)] ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). Where the prior art contains "apparently conflicting" teachings (i.e., where some references teach the combination and others teach away from it) each reference must be considered "for its power to suggest solutions to an artisan of ordinary skill.... consider[ing] the degree to which one reference might accurately discredit another." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).

Ex Parte Grunau, et al PATE, III 103(a) HENRY M FEIEREISEN, LLC
Hydraulic tensioner
Sakai US 5,480,358 Jan. 2, 1996
Kratz US
6,106,424 Aug. 22, 2000
Grunke US
2001/0016530 A1 Aug. 23, 2001
Schittler DE 10155364 A1 May 22, 2003
Giese (as translated) WO 92/14039 Aug. 20, 1992


3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Dickerson LORIN 112(1)/101/103(a) HOFFMAN WARNICK, LLC
method and system for generating a value proposition for a company in an industry
Sanders US 6,411,936 B1 Jun. 25, 2002
Machin US
6,877,034 B1 Apr. 5, 2005
The Examiner applied the useful, concrete, and tangible result inquiry to determine that claims 23 and 26-33 are non-statutory because they lack concreteness. Ans. 4. However, the court in Bilski held that “the ‘useful, concrete and tangible result’ inquiry is inadequate [to determine whether a claim is patent-eligible under § 101.]” In re Bilski, 545 F.3d 943, 959-60 (Fed. Cir. 2008) (en banc).


3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Baer et al SILVERBERG 102(b)/103(a) ARMSTRONG TEASDALE LLP
Stretchable composite sheet for adding softness and texture
Jackson US 4,865,221 Sep. 12, 1989

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Korb et al HORNER 103(a) MCCARTER & ENGLISH, LLP
Composite utility knife blade, and method of making such a blade
CN ‘509 CN 2275509Y Apr. 3, 1998
Anderson US
3,315,548 Apr. 25, 1967

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