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Wednesday, January 6, 2010


1600 Biotechnology and Organic Chemistry

Ex Parte Wershofen et al FREDMAN 103(a) BAYER MATERIAL SCIENCE, LLC

We conclude that the improvement was not simply the result of routine experimentation. While O'Farrell states that “[o]bviousness does not require absolute predictability of success”, O'Farrell identifies two kinds of error.

In some cases, what would have been “obvious to try” would have been to vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful. . . . In others, what was “obvious to try” was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.
In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988). The instant situation fits O'Farrell’s first kind of error, since the prior art of Wershofen does not identify the addition of terminator as a critical parameter and provides no direction which suggests multiple additions of the same terminator.

O’Farrell, In re, 853 F.2d 894, 7 USPQ2d 1673 (Fed. Cir. 1988) . .
2143.01, 2143.02, 2144.08, 2145

1700 Chemical & Materials Engineering
Ex Parte Hunt et al HANLON 102(b) JoAnn Villamizar Ciba Corporation

2100 Computer Architecture and Software

Ex Parte Veit BARRY 102(e)/103(a) STAAS & HALSEY LLP

Ex Parte Campbell et al HUGHES 112(1)/102(e)/103(a) Christensen, O’Connor, Johnson, Kindness, PLLC

2800 Semiconductors, Electrical and Optical Systems and Components

To establish prima facie obviousness of a claimed invention, all the claim limitations must be taught or suggested by the prior art. See In re Royka, 490 F.2d 981, 985 (CCPA 1974).

“[I]nterpreting what is meant by a word in a claim is not to be confused with adding an extraneous limitation appearing in the specification, which is improper.”
In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir. 2002) (citation omitted) (internal quotation marks omitted).

Cruciferous Sprout Litig., In re, 301 F.3d 1343, 64 USPQ2d 1202 (Fed. Cir. 2002) . . 2111.02

Ex Parte Smith et al HAHN 103(a) GRAY ROBINSON, P.A.


1600 Biotechnology and Organic Chemistry
Ex Parte Xia et al FREDMAN 103(a) ERIC P. MIRABEL

Rather, the Examiner merely postulated as to why one of ordinary skill in the art at the time of the invention would have found the modification of “flipping” obvious, without any teachings from the prior art to support this reasoning. Such a conclusion, without more, is insufficient to establish a prima facie case of obviousness. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972) (A prima facie case of obviousness is made by presenting evidence that the “reference teachings would appear to be sufficient for one of ordinary skill in the relevant art having the references before him to make the proposed substitution, combination or other modification.”); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

Lintner, In re, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) . . . . . . . . . .2142, 2143.01, 2144, 2144.08, 2145

Oetiker, In re, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992) . . . . . . . . . . . . . . . .707.07(f) , 716.01(d) , 1504.01(a) , 2106, 2107.02 , 2142, 2145, 2164.07

1700 Chemical & Materials Engineering

2100 Computer Architecture and Software
Ex Parte Cohen HUGHES 102(e)/103(a) Carey, Rodriguez, Greenberg & Paul, LLP

3700 Mechanical Engineering, Manufacturing, and Products & Design

Ex Parte Mabe et al HORNER 103(a) KNOBLE & YOSHIDA, LLC

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