Monday, October 08, 2012

Appellant Sell gets victory at BPAI

The BPAI, in part, reversed the Examiner in the case Ex parte JONATHAN C. SELL.

Of law:

“[U]nless a prior art reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). A claim element cannot be interpreted so broadly so as to read the limitation out of the claim. See Texas Instr. Inc. v. United States Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993). Further, claim terms are not interpreted in a vacuum, devoid of the context of the claim as a whole. See Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir. 1999) (“[p]roper claim construction ... demands interpretation of the entire claim in context, not a single element in isolation.”); See also Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term is used in the asserted claim can be highly instructive.”).

As to anticipation:

We agree with Appellant. As explained by Appellant, the
magnetically active material 16 and 18 of Ehr are not described or illustrated as being distal to the balloon. (FF2.) It is the coil element that extends beyond the distal end of the balloon. (FF2.) The claims not only require the placement of the magnetically responsive element on the distal tip of the core member, the claims also specify that this location is distal to the balloon/expandable element. We find that the Examiner’s claim construction reads the term “tip” out of the claim and further ignores the phrase “spaced distally relative to the expandable element.” We therefore will not sustain the Examiner’s rejection of claims 1 and 35.


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