Wednesday, November 07, 2012

Thibault case discussed by Board in GM appeal

The fuel cell application [ 11/735,253 ] of General Motors [GM] got a mixed result on appeal to the Board:

Final rejection of claims 5, 13, 16 and 18 is affirmed. Final rejection of the
other pending claims is reversed.

The examiner contends that the contested language is not entitled to weight
because it is directed to the manner of operating the fuel cell system rather than imposing an actual limitation on the claimed apparatus,29 citing Ex parte Thibault.30 In Thibault, the board explained that31 If the apparatus as claimed is not fully described in [the prior art], it differs so little therefrom as to be obvious to the designer of apparatus. The purpose to which the apparatus is to be put and the numerous expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.
Thibault does not reproduce the apparatus claim in question, but expressly finds that it is very closely the same as the prior art. Thibault, thus, does not create a per se rule that contents and mode of operation never count, but rather simply holds that when disclosed structures are essentially the same and the contents and use would have been obvious from the prior-art structure, the lack of an express teaching of content and use will not prevent anticipation. In short, Thibault's holding cannot be abstracted from its context. Today, we might say that the prior- art apparatus was capable of containing and operating as claimed.

[Thibault, 164 USPQ 666 (Bd. App. 1969). ]


Blogger Unknown said...

Thanks for posting this decision. I've been looking for a copy of the prosecution history of Thibault because this 1969 Board decision is often quoted for the proposition that limitations can be thrown out of the claim, but the citation in the MPEP provides claims 1 and 11, but then expounds on the Board's holding on claim 12. We don't know what the Board is talking about when the Board speaks of "expressions." Are those the attorney arguments, or are they referring to claim limitations? MPEP 2115 also cites to In re Otto, a classic case of the applicant arguing that intended use made the claim patentable, and In re Young from 1935. Certain rules of procedure were different then, and it's not clear that the case really supports the rule, either.
My issue is that I've encountered the situation where an old structure can be used in conjunction with a different fluid, say, and ought to be protectable. Think, a transmission filled with peanut butter. If claimed as a transmission for being filled with peanut butter, I agree it's not patentable over a transmission. But a claim to a transmission filled with peanut butter positively recites the peanut butter. A transmission not filled with peanut butter wouldn't infringe and shouldn't anticipate. I've never had a client willing to pursue the matter, so I've lost claims to this line of thinking.

12:09 AM  

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