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

Monday, September 7, 2009


2400 Networking, Mulitplexing, Cable, and Security

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Cohen et al KERINS 102(b) HOFFMAN & BARON, LLP


1700 Chemical & Materials Engineering
Ex Parte Landa et al TIMM 112(1)/112(2) HEWLETT-PACKARD COMPANY

The Examiner must provide some analysis that either: (1) considers factors such as the whether the scope would be outside of the knowledge of one skilled in the art or whether the field of art is unpredictable, Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004) (“[T]he difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus”), or (2) demonstrates that the specification reflects that the invention can be no broader than what is literally disclosed in the specification. See Tronzo v.Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir. 1998) (by distinguishing conical cup shape over prior art shapes, specification made clear that the invention was limited to conical shaped cups and nothing broader); Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473, 1479 (Fed. Cir. 1998) (original disclosure that clearly identified the console as the only possible location for controls did not provide support for claims that did not limit the location).

2800 Semiconductors, Electrical and Optical Systems and Components

Ex Parte Grigg OWENS 112(1)/102(a)/103(a) TRASKBRITT, P.C.

Ex Parte Sugimoto et al COLAIANNI 103(a) NIXON & VANDERHYE, PC

The transitional phrase “comprising” is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004).

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Starkston et al HORNER 102(a)/103(a) SCHWEGMAN, LUNDBERG & WOESSNER, P.A.

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