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Monday, December 21, 2009


1600 Biotechnology and Organic Chemistry
Ex Parte Iversen et al PRATS 103(a) KING & SPALDING LLP

1700 Chemical & Materials Engineering

Ex Parte Gillespie et al McKELVEY 103(a) ALSTON & BIRD LLP

All can agree that 20% is not "25% by weight or greater".

But, does "about 20%" read on "25% by weight or greater"?

Use of "about 20%" would lead one skilled in the art to believe that Mleziva was not limiting the amount of reclaimed polymer to "20%". In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005) (use of "about" in a claim shows that the applicant does not intend to limit the claimed ranges to their exact end-points). "About" generally means "approximately." Merck & Co., Inc. v. Teva Pharms. USA, 395 F.3d 1364, 1367 (Fed. Cir. 2005).

The following helpful analysis concerning "about" in claims appears in Cohesive Techs., Inc. v. Waters Corp. , 543 F.3d 1351, 1368 (Fed. Cir. 2008): The word about does not have a universal meaning in patent claims, and its meaning depends on the technological facts of the particular case. When about is used as part of a numeric range, the use of the word about avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context. In determining how far beyond the claimed range the term about extends the claim, we must focus on the criticality of the numerical limitation to the invention.

While most of the cases focus on the meaning of "about" in a claim, this case involves the meaning of "about" in a prior art reference.

Harris, In re, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) . . . . . . . 2144.05

Merck & Co., Inc., v. Teva Pharms. USA, Inc. , 395 F.3d 1364, 73 USPQ2d 1641 (Fed. Cir. 2005) . . . . . . . . . . . . . . . . .2111.01

2800 Semiconductors, Electrical and Optical Systems and Components

Mechanical Engineering, Manufacturing, and Products & Design
Ex Parte Pfister et al TURNER 102(b) Scientific-Atlanta, Inc.


1600 Biotechnology and Organic Chemistry
Ex Parte Banerjee et al FREDMAN 102(e)/103(a) ERIC P. MIRABEL

Chemical & Materials Engineering
Ex Parte Holzschuh et al NAGUMO 103(a) YOUNG & THOMPSON

Thus, in an obviousness rejection, the prior art must provide a reference process as well as evidence that the modifications necessary to obtain the claimed process would have been obvious. (Cf. the role of the requirement, under some circumstances, that the prior art provide a “lead compound” when considering the obviousness of a chemical compound, discussed in Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd. , 492 F.3d 1350, 1356-57 (Fed. Cir. 2007)).

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