Thursday, October 11, 2012

Oracle loses re-hearing request at BPAI

In denying a rehearing sought by patent applicants from Oracle, the BPAI cited a great deal of case law. [See Ex parte Li]

As to the underlying issue of obviousness:

Here, the Examiner directed our attention to Chen’s teachings of a “cursor as input” and how such a cursor is used by the function (Ans. 5-6; 23-25). The Supreme Court has held that in analyzing the obviousness of combining elements, a court need not find specific teachings, but rather may consider “the background knowledge possessed by a person having ordinary skill in the art” and “the inferences and creative steps that a person of ordinary skill in the art would employ.” See KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007). To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions,” and the basis for an obviousness rejection must include an “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id.

As to rehearings:

A request for rehearing “‘must state with particularity the points believed to have been misapprehended or overlooked by the Board’” and “must specifically recite ‘the points of law or fact which appellant feels were overlooked or misapprehended by the Board.’” Ex Parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential) (quoting MPEP § 1214.03). Appellants have not specifically pointed out any where the Board overlooked or misapprehended this particular point in its Decision.
Therefore, these belated arguments are technically waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”). Similarly, the “Request for Rehearing” is not an opportunity to make arguments that could have been made in the principal brief on appeal. Appellants could have presented the new argument in support of claim 1 in the Appeal Brief, such that we would have had benefit of the Examiner’s evaluation of the argument in the responsive Answer. Appellants do not explain what good cause there might be to consider the new argument now. Appellants’ new argument is thus untimely and has, accordingly, not been considered. See Ex parte Borden, 93 USPQ2d 1473 (BPAI 2010) (informative).
Furthermore, we decline to examine the claims sua sponte, looking for distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art.”). See also Ex parte Belinne, No. 2009- 004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009) (informative). It is Appellants’ responsibility to present clear arguments as to why the Examiner erred. We find Appellants’ apparent contention that we overlooked arguments that the construct extends a particular database language unpersuasive. Furthermore, we find no misapprehension with our understanding of a “function.”


“In the patentability context, claims are to be given their broadest reasonable interpretations. . . . [L]imitations are not to be read into the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). A claim meaning is reasonable if one of ordinary skill in the art would understand the claim, read in light of the specification, to encompass the meaning. See In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Any special meaning assigned to a term “must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention.” Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998).


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