"Attorney argument" fails in Ex parte Wang
In Ex Parte Wang, the BPAI gets "in step" with the "new" patent law:
Following this Amendment, the Examiner rejected claims 1-5 under 35 U.S.C. § 112, ¶ 1 (now 35 U.S.C. § 112(a)). The Examiner found that the newly added language constituted new matter because it lacks written description support in the ’421 application as originally filed.
The applicant did not fare well:
However, Appellant’s assertion regarding what is common knowledge to a person of ordinary skill in the art is not supported by anything other than attorney argument. Furthermore, this argument is inconsistent with arguments made later in the Appeal Brief, where Appellant argues that a person of ordinary skill in the art would think that the thin-strip vias would not have disappeared automatically. App. Br. 8.
As to obviousness, the applicant won:
Appellant asserts that the Examiner’s rejection should be reversed for at least three reasons: (1) lack of a motivation to combine the teachings of Heath and Higuchi, (2) lack of a reasonable expectation of success that the device created by following the combined teachings of Heath and Higuchi would work for its intended purpose, and (3) the combination of Heath and Higuchi do not teach or suggest all of claim 1’s limitations. App. Br. 9. This appeal may be resolved by on the basis of the last of these arguments.