Saturday, November 17, 2012

Teaching away discussed in Ex parte McEwan

Appellant John McEwan loses his appeal to the Board:

The Examiner’s decision rejecting claims 1, 2, 4-18, 20, 21, 23-38,
40-45, 47, and 49 is affirmed.

As to teaching away:

If a prior art reference discloses a different solution to a similar problem, it does not teach away from the claimed subject matter unless the prior art reference also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, Appellant does not point to any probative evidence showing that Duhame criticizes, discredits, or otherwise discourages the Examiner’s proposed modification of Duhame. See App. Br. 9. Absent such evidence, Appellant’s argument reduces to a statement that Duhame discloses something different. We are therefore not persuaded that Duhame teaches away from the claimed invention.

As to analogous art:

Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). We first note that Appellant does not apply the correct legal standard. Appellant argues that the issue is whether particular elements are within the same field of endeavor and not whether the references are in the same field of endeavor. Id. Furthermore, Appellant does not explain why Fischer is not reasonably pertinent even if Fischer is not, as argued, within the same field of endeavor.

Of prima facie case:

[T]he PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing] the applicant... [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.”
That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)


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