Monday, January 07, 2013

Mixed result on obviousness in Ex parte Melsky

The result of Ex parte Melsky was a mixed bag:

The rejections of claims 2, 5, 6, 95, 100, 109, 110, 119-123, and 125-
131 are reversed. The rejections of claims 1, 84-87, 89-94, 96-99, 101, 107, 108, 112,
and 115-118 are affirmed.

KSR was cited as to claim 1:

The selection of an appropriate depth of field for the Campbell endoscope from a range known in the art amounts to no more than the implementation of a known feature with a predictable result, which bars patentability. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).

Although the appellants lost on claim 1, they prevailed on claim 2:

We find no mention in the passages cited by the Examiner (col. 16, l. 10–col. 17, l. 5) of the distal end of the Campbell balloon being utilized as an orientation marker, and the Examiner does not cogently explain how these passages are relevant.


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