Monday, November 17, 2014

Board affirms obviousness and refers to Applicant specification for advantages of adding secondary reference

Takeaway: The Applicant appealed an obviousness rejection of claims directed to a process of manufacturing stents. Though the Final Office Action relied on advantages taught by the secondary reference, the Advisory Action also mentioned advantages disclosed in the Applicant's specification. The Appeal Brief argued that these Applicant-known advantages actually showed that the secondary reference was non-analogous art. The Board affirmed the obviousness rejection. Though the Decision mentioned advantages taken from the secondary reference, the Board also appeared to impermissibly rely on the Applicant-known advantages as a reason to combine. (Ex parte Sciver, PTAB 2014.)


Ex parte Sciver
Appeal 2012011728; Appl. No. 12/748,271; Tech. Center 1700
Decided:  October 31, 2014

The application was directed to systems methods for coating a stent with a drug.

Tuesday, November 11, 2014

Board finds swear-behind declaration to be insufficient for lack of explanation

Takeaway: The Applicant attempted to remove a reference with a § 1.131 (swear-behind) declaration. The two-page declaration referred to an Appendix A included in the provisional application but did not comment or explain on the Appendix. The Board found that the Applicant had not provided any of the evidence needed to show conception, reduction to practice, or diligence. "[T]here is no explanation of what the document in Appendix A is; whether it purports to establish conception or actual reduction to practice; what diligence, if any, the inventors can show in reducing the invention to practice; and how it discloses the claimed invention." (Ex parte Schmidt, PTAB 2014.)

Ex parte Schmidt
Appeal 2012005120; Appl. No. 10/156,131; Tech.Center 2600
Original Decision:  May 29, 2014; Rehearing Decision:  Sept. 12, 2014

In response to a prior art rejection in a Non-Final Office Action, the Applicant attempted to remove a reference with this § 1.131 (swear-behind) declaration:

Thursday, November 6, 2014

Board ignores qualifier "discrete" and interprets "connected to" to allow indirect connections

Takeaway: In an appeal of claims to a memory controller, the Board gave no weight to the qualifier "discrete," and interpreted "connected to" as allowing indirect connections rather than requiring direct connections. (Ex parte Morrow, PTAB 2008.)

Ex parte Morrow
Appeal 2007-3972; Appl. No. 10/027,978; Tech. Center 2100
Decided: May 8, 2008

The application on appeal was directed to a memory controller for a computer system. Two of the independent claims on appeal read:
     14. An apparatus, comprising:
     a memory controller; and
     a table walk device connected to the memory controller and externally located from a memory management unit (MMU).

     23. A system, comprising:
     a processor;
     a discrete memory controller adapted to perform a table walk operation and coupled to the processor; and
     a volatile memory device coupled to the discrete memory controller.

Friday, October 17, 2014

Broadest Reasonable Interpretation does not allow broadening from a dictionary definition

Takeaway: In today's post I'll discuss two cases where the Board found that Broadest Reasonable Interpretation does not mean the Examiner can start with a dictionary definition and broaden from there.

In Ex parte Butler, the application was directed to a positioning control system for lithographic printing, and the claim term at issue was "a partial order filter". The claim was rejected as anticipated by a reference (Yuan) teaching a photolithography system. The reference system used a filter and listed notch, low pass, and high pass filters as examples.

Tuesday, October 14, 2014

Board affirms obviousness when Applicant misunderstands Examiner's combination

Understanding the Examiner's position is key to advancing prosecution. Before appeal, it's best that the Applicant understands what the Examiner is saying, and that the Examiner understands what the Applicant is saying. Certainly a misunderstanding was at the root of the appeal of an obviousness rejection in Ex Parte Sudhardja. Sometimes the Examiner doesn't explain clearly, sometimes the Applicant just doesn't get it, and sometimes both forces are at work. What happened here?

Ex Parte Sudhardja
Appeal 2010-004119; Application No. 11/196,651; Tech. Center 2100
Decided  November 5, 2012

The application on appeal was directed to a "self-repairing" graphics processing unit (GPU) that included redundancy features. The application was a Continuation-In-Part. The parent application described redundant functional units in an integrated circuit; the CIP added GPU-specific details.

Wednesday, October 8, 2014

Board reminder that Federal Circuit appeal, not PTAB Rehearing, is the appropriate forum to reargue issues already decided by the PTAB

The PTAB Rehearing decision Ex parte Brozell criticized an Applicant for filing a Request for Rehearing in order to argue that the Board had erred on claim construction and on the conclusion of obviousness:
[A] request for rehearing is not an opportunity to express disagreement with a decision. The proper course for an appellant dissatisfied with a Board decision is to seek judicial review, not to file a request for rehearing to reargue issues that have already been decided.
(Emphasis added.)