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

Thursday, October 20, 2011

o'farrell, wiseman, jung, abele, cybersource


2100 Computer Architecture and Software
2114 Ex Parte Rao et al 11/170,331 ZECHER 103(a) WALTER W. DUFT EXAMINER TRUONG, LOAN

2161 Ex Parte Agrawal et al 11/317,216 HOMERE 102(b)/103(a) The Danamraj Law Group, PC/RIM EXAMINER MINCEY, JERMAINE A

2186 Ex Parte Dunshea et al 11/006,127 BARRY 102(b) Yudell Isidore Ng Russell PLLC EXAMINER BIRKHIMER, CHRISTOPHER D

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
3655 Ex Parte Michaud et al 10/856,534 HORNER 103(a) 37 C.F.R. § 41.50(b) 102(b) Winston & Strawn LLP EXAMINER PANG, ROGER L

3689 Ex Parte Kruk et al 10/279,188 KIM 103(a) HEWLETT-PACKARD COMPANY EXAMINER NGUYEN, TAN D

3700 Mechanical Engineering, Manufacturing, and Products & Design
3761 Ex Parte Tak et al 10/837,390 HORNER 103(a) PEACOCK MYERS, P.C. EXAMINER WIEST, PHILIP R


2100 Computer Architecture and Software
2193 Ex Parte Imamatsu 10/705,437 CHEN 102(a) 102(a) KATTEN MUCHIN ROSENMAN LLP EXAMINER YAARY, MICHAEL D


1600 Biotechnology and Organic Chemistry
1635 Ex Parte McSwiggen et al 10/720,448 FREDMAN 103(a) MERCK EXAMINER BOWMAN, AMY HUDSON

O’Farrell states that “[o]bviousness does not require absolute predictability of success.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). 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.

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

1633 Ex Parte Subramaniam et al 11/449,125 WALSH 103(a) STINSON MORRISON HECKER LLP EXAMINER POPA, ILEANA

There is no dispute that the difference in starting material shape dictates the resulting nanoparticle shape. In the Wiseman case, the discovery of a new function did not render Wiseman’s disc brakes nonobvious, and the inherent difference in shape here is similarly insufficient. “[Appellants] are, in effect, arguing that a structure suggested by the prior art, and, hence, potentially in the possession of the public, is patentable to them because it also possesses an Inherent, but hitherto unknown, function which they claim to have discovered. This is not the law. A patent on such a structure would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art.” In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979).

Wiseman, In re, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979) 2141.02, 2145, 2164.06(c)


1700 Chemical & Materials Engineering
1784 Ex Parte Cetel et al 11/284,612 TIMM 103(a) BACHMAN & LAPOINTE, P.C. c/o CPA Global EXAMINER AUSTIN, AARON

2100 Computer Architecture and Software

2400 Networking, Mulitplexing, Cable, and Security
2455 Ex Parte Karamchedu et al 10/635,184 COURTENAY 103(a) Schwabe Williamson & Wyatt EXAMINER ENG, DAVID Y

See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the Board gave improper deference to the examiner’s rejection by requiring Jung to ‘identif[y] a reversible error’ by the examiner, which improperly shifted the burden of proving patentability onto Jung. Decision at 11. This is a hollow argument, because, as discussed above, the examiner established a prima facie case of anticipation and the burden was properly shifted to Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must identify to the Board what the examiner did wrong . . . .”).

3700 Mechanical Engineering, Manufacturing, and Products & Design
3715 Ex Parte Gillaspy et al 10/947,417 HOELTER 101/103(a) Keohane & D'Alessandro EXAMINER CARLOS, ALVIN LEABRES

Our reviewing court in In re Abele, 684 F.2d 902 (CCPA 1982) held that a claim directed to the steps of calculating and displaying was not statutory stating that “[t]his claim presents no more than the calculation of a number and display of the result, albeit in a particular format” (Id. at 908-09). Appellants’ claim 1 does not even include the displaying step recited in Abele’s rejected claim. See also CyberSource Corp. v. Retail Decision Inc., 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (“[t]he mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test” and that “mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”)

Abele, In re, 684 F.2d 902, 214 USPQ 682 (CCPA 1982) . . . . . . . . . . 2106, 2106.01, 2184



1700 Chemical & Materials Engineering
1798 Ex Parte Lingle et al 10/453,790 GUEST Concurring WARREN 103(a) NIXON & VANDERHYE, PC EXAMINER PIZIALI, ANDREW T

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