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

Tuesday, October 20, 2009


1600 Biotechnology and Organic Chemistry
Ex Parte Aronhime et al GRIMES 112(2)/102(b)/103(a) KENYON & KENYON LLP

“[T]he statute provides for what may be said to be a presumption of novelty in the language of section 102 ‘a person shall be entitled to a patent unless ---’ (Emphasis added). What this means, in an ex parte proceeding to obtain a patent, is that the Patent Office has the initial burden of coming forward with some sort of evidence tending to disprove novelty.” In re Wilder, 429 F.2d 447, 450 (CCPA 1970).

2100 Computer Architecture and Software

Ex Parte D'ALO et al HOMERE 102(b)/103(a) DILLON & YUDELL LLP

2600 Communications
Ex Parte Lee et al BOALICK 112(1)/102(e)/103(a) WILLIAMS, MORGAN & AMERSON

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Heschel et al PATE, III 102(b) FISH & RICHARDSON P.C.

Determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written involves a two-part test. First, we look to the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written. If not, we next look to the rest of the specification to determine whether it “directly or implicitly requires such a narrow construction.” If not, the sequence in which such steps are written is not a requirement. Altiris, Inc. v. Symantec Corp. 318 F.3d 1363, 1369-1370 (Fed. Cir. 2003); See also Loral Fairchild Corp. v. Sony Electronics Corp., 181 F.3d 1313, 1321 (Fed.Cir.1999) (holding that the claim language itself indicated that the steps had to be performed in their written order because the second step required the alignment of a second structure with a first structure formed by the prior step.); See also Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc. , 152 F.3d 1368, 1375-76, (Fed.Cir.1998) (holding that the steps of a method claim had to be performed in their written order because each subsequent step referenced something logically indicating the prior step had been performed).

Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 65 USPQ2d 1865 (Fed. Cir. 2003). . . 2111.01


1700 Chemical & Materials Engineering
Ex Parte Schewe et al ROBERTSON 102(b) VIDAS, ARRETT & STEINKRAUS, P.A.

2100 Computer Architecture and Software

Ex Parte Lowrey JEFFERY 103(a) TROP, PRUNER & HU, P.C.

"‘Functional’ terminology may render a claim quite broad. By its own literal terms a claim employing such language covers any and all embodiments which perform the recited function." In re Swinehart, 439 F.2d 210, 213 (CCPA 1971).

Representative claim 11 recites a phase change memory. The remainder of the claim is a functional limitation that the memory is directly accessible by a CPU and, thus, only requires that the memory is inherently capable of being directly accessible by the CPU. See Swinehart, 439 F.2d at 213. Thus, for the same reasons discussed above in connection with claim 1, we find no error in the Examiner’s rejection of claim 11 and claims 12-19 which fall with claim 11.

Swinehart, In re, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) . . . . . .2114, 2173.01, 2173.05(g), 2183

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review

Ex Parte Hillman TIERNEY 103(a) 37 C.F.R. § 41.50(b) CAREY, RODRIGUEZ, GREENBERG & PAUL LLP

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