Tuesday, October 16, 2012

BPAI overturns rejections in Ex parte SCHNEIDER

As to anticipation, the BPAI cited Net MoneyIn v. VeriSign, 545 F.3d 1359: “[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. ”

The BPAI also noted: However, 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) (Claim language cannot be mere surplusage. An express limitation cannot be read out of the claim).

Applicant prevailed.

Ex parte Schneider


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