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

Wednesday, December 23, 2009


1600 Biotechnology and Organic Chemistry
Ex Parte Romanczyk et al LANE 103(a) NADA JAIN, P.C.

Though an inherent property need not have been known in the prior art to establish anticipation, when an inherent property is relied upon as a reason to combine references, the property must have been known in the art. See In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989) (“a retrospective view of inherency is not a substitute for some teaching or suggestion which supports the selection and use of various elements in the particular claimed combination.”). The Examiner has not provided evidence that compound An was known to be an NO-modulating agent in the prior art.

1700 Chemical & Materials Engineering

Ex Parte Skidmore et al KRATZ 103(a) AUZVILLE JACKSON, JR.

2100 Computer Architecture and Software
Ex Parte Gilgen et al BARRETT 101/103(a) CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP

"Software" claimed, for example, as "executable code" or as mere functions is similarly not within any of the four statutory categories and is not patent eligible subject matter. See In re Chatfield, 545 F.2d 152, 159 (CCPA 1976) (Rich, J., dissenting) ("It has never been otherwise than perfectly clear to those desiring patent protection on inventions which are new and useful programs for general purpose computers (software) that the only way it could be obtained would be to describe and claim (35 U.S.C. § 112) the invention as a 'process' or a 'machine.'"). It is now also common to claim software as a "manufacture" by reciting storing program code stored on a tangible medium that, when executed, will perform a method. But, software per se is not a "manufacture" under § 101.

2400 Networking, Mulitplexing, Cable, and Security

Ex Parte Jeon MARTIN 103(a) 37 C.F.R. § 41.50(b) BIRCH STEWART KOLASCH & BIRCH

A statement by an applicant during prosecution identifying certain matter not the work of the same inventor as “prior art” is an admission that the matter is prior art. Riverwood Int’l Corp. v. R.A. Jones & Co. , 324 F.3d 1346, 1354 (Fed. Cir. 2003). Such an admission can be relied on as support for a rejection under 35 U.S.C. § 103(a). See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (“We see no reason why appellants’ representations in their application should not be accepted at face value as admissions that Figs. 1 and 2 may be considered ‘prior art’ for any purpose, including use as evidence of obviousness under § 103.”). Furthermore, a person is barred by 35 U.S.C. § 102(f) from obtaining a patent on that which is obtained from someone else whose possession of the subject matter is inherently “prior.” See OddzOn Prods., Inc. v. Just Toys, Inc. , 122 F.3d 1396, 1401 (Fed. Cir. 1997) (“Section 102(f) provides that a person shall be entitled to a patent unless ‘he did not himself invent the subject matter sought to be patented.’ This is a derivation provision, which provides that one may not obtain a patent on that which is obtained from someone else whose possession of the subject matter is inherently ‘prior.’”). Derivation of an invention from the work of another can be applied as § 102(f) prior art in a rejection based on §§ 102(f) and 103. Id. at 1403-04 (“[S]ubject matter derived from another not only is itself unpatentable to the party who derived it under § 102(f), but, when combined with other prior art, may make a resulting obvious invention unpatentable to that party under a combination of §§ 102(f) and 103.”).

Riverwood Int’l Corp. v. R.A. Jones & Co. , 324 F.3d 1346, 66 USPQ2d 1331 (Fed. Cir. 2003) . . . . . . . . . . .706.02, 2129, 2141.01

Nomiya, In re, 509 F.2d 566, 184 USPQ 607 (CCPA 1975) . . . . . . . . . . . . . . . . . .2129, 2258

OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 43 USPQ2d 1641 (Fed. Cir. 1997). . . . . . . . . . . . . . . . 706.02(l) , 2004

Ex Parte Natarajan et al BARRETT 103(a) HEWLETT-PACKARD COMPANY

2600 Communications

Ex Parte Kennedy et al HAIRSTON 103(a) MHKKG/SUN

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Shuster LORIN 112(2)/103(a) KNOBBE MARTENS OLSON & BEAR LLP


1700 Chemical & Materials Engineering
Ex Parte Ditzel et al DELMENDO 112(2)/112(1)/102(b)/103(a) SIEMENS CORPORATION

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