Wednesday, September 12, 2012

Ex parte Kitada: no articulated reasoning by Examiner

In Ex parte Kitada applicants did obtain a partial victory at the BPAI.

Appellants overcame one obviousness determination:

Appellants' arguments are persuasive for at least the following
reasons: (1) On this record, the Examiner has not articulated reasoning with
the requisite "rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation
omitted). (2) More specifically, the Examiner's reasoning that one would
rearrange the connection terminals to match Appellants' claimed
configuration "to connect to different circuits, and to meet different design
choices" is merely a theory of possible use, unsupported by evidence. (Ans.
7). Therefore, we reverse the rejection of independent claim 7 and the
rejections of claims 8-19 and 21, which depend therefrom.


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