Wednesday, January 16, 2013

Good news/bad news for GE in Ex parte BAUMGARTNER

Within Ex part BAUMGARTNER, General Electric overcame the Examiner's rejections but got new rejections courtesy of KSR.


“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421. (...) Applying the KSR standard of obviousness to the findings of fact, we conclude that the person of ordinary creativity would have predictably combined the load detecting circuit for detecting contact with the skin of Akisada with the ultrasonic transducer of Emery since Emery is interested in “determining if a probe is coupled to a body to be imaged” (Emery, col. 6, ll. 31-32; FF 10). Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.

Of written description

[T]he hallmark of written description is disclosure.... [T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.

Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).


While the Examiner is correct that the specific language of the claims was not disclosed ipsis verbis in the Specification, ipsis verbis support is not required. Fujikawa v. Wattanasin, 93 F.3d 1559, 1570 (Fed. Cir. 1996).

Zletz is cited

With regard to claims 8 and 10, we interpret these claims to require that the physical sensor is turned on using a manual power switch, but the claims do not require that the switch solely function to turn on the physical sensor, but may be a switch which activates the entire ultrasound system. See In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”).


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