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

Wednesday, September 2, 2009


1600 Biotechnology and Organic Chemistry
Ex Parte Alroy FREDMAN 112(1)/112(2) DANEIL ALROY

"In order to satisfy the enablement requirement of section 112, an applicant must describe the manner of making and using the invention ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art … to make and use the same …. ’35 U.S.C. § 112, para. 1."
Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1323 (Fed. Cir. 2005).

Factors to be considered in determining whether a disclosure would require undue experimentation … include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.

In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

3700 Mechanical Engineering, Manufacturing, and Products & Designs

“Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992).

“A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor’s endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.”
In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992). In other words, “familiar items may have obvious uses beyond
their primary purposes.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, [402],
127 S.Ct. 1727, 1742 … (2007). We therefore have concluded, for example, that an
inventor considering a hinge and latch mechanism for portable computers would
naturally look to references employing other “housings, hinges, latches,
springs, etc.,” which in that case came from areas such as “a desktop telephone
directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden
furniture cabinet, or a two-part housing for storing audio cassettes.”
[In re]
30 F.3d [1475,] at 1481-82 [(Fed. Cir. 1994)].
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (folding bed found analogous to appellant’s folding treadmill).


2400 Networking, Mulitplexing, Cable, and Security
Ex Parte Janssen et al BAUMEISTER 102(b)/103(a)/112(2) 37 C.F.R. § 41.50(b) KNOBLE, YOSHIDA & DUNLEAVY

3700 Mechanical Engineering, Manufacturing, and Products & Designs

Ex Parte Zamperla et al McCOLLUM 103(a) KENYON & KENYON LLP

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