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

Saturday, February 6, 2010


2100 Computer Architecture and Software
Ex Parte Grandou et al THOMAS 102(b)/103(a) NIXON & VANDERHYE, PC

Ex Parte Kershaw et al COURTENAY 102(e)/103(a) NIXON & VANDERHYE, PC

However, we note that functional equivalence is not enough to show anticipation of a structural component (such as the claimed memory management unit). See In re Ruskin, 347 F.2d 843, 846 (CCPA 1965) (“the functional equivalent is not enough to be a full anticipation of the specific device claimed by appellant.”).

Ruskin, In re, 354 F.2d 395, 148 USPQ 221 (CCPA 1966) . . . . . . . . . . . . . . . . . . . .2107.01

Ex Parte Tsyrganovich HUGHES 102(b)/103(a) IMPERIUM PATENT WORKS

3700 Mechanical Engineering, Manufacturing, and Products & Design
Ex Parte McLoughlin et al O’NEILL 103(a) HAYNES AND BOONE, LLP

In other words, it is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “To draw on hindsight knowledge of the patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction—an illogical and inappropriate process by which to determine patentability.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.” Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)).

W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983). . . . 2132, 2133.03(a), 2133.03(c), 2141.01, 2141.02, 2144.08, 2164.08, 2165.04, 2173.05(b)

Ex Parte Rohrer et al O’NEILL 103(a) QUARLES & BRADY LLP

To support a conclusion that a claim is directed to obvious subject matter, prior art references must suggest expressly or impliedly the claimed invention or an Examiner must present a “convincing line of reasoning’ as to why one of ordinary skill in the art would have found the claimed invention to have been obvious. Ex parte Clapp, 227 USPQ 972, 973 (BPAI 1985). When determining whether a rejection based on design choice is appropriate, the Examiner must review the Specification and ascertain if the limitation in question is disclosed as serving any advantage or particular purpose, or whether it solves a stated problem. The Examiner also should explain the reasoning used to determine that the prior art would have performed equally as well as the claimed invention. These two steps help present the aforementioned “convincing line of reasoning.” Ex parte Clapp, 227 USPQ at 973.

Clapp, Ex parte, 227 USPQ 972(Bd. Pat. App & Inter. 1985). . . . . . 706.02(j), 2144

Ex Parte Allison et al McCARTHY 103(a) HAYNES AND BOONE, LLP

Ex Parte Eves et al SILVERBERG 103(a) BURNS & LEVINSON, LLP


1700 Chemical & Materials Engineering
Ex Parte De Bosscher et al ROBERTSON 103(a) Barnes & Thornburg LLP

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Pulli et al SILVERBERG 102(b)/103(a) DRINKER BIDDLE & REATH (DC)

3700 Mechanical Engineering, Manufacturing, and Products & Design

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