Wednesday, February 20, 2013

KSR kills off archery bow claims

The Board affirmed the Examiner in an appeal of ex parte re-exam 90/009,930, Ex parte SIMS VIBRATION LABORATORY, INC. .

The subject matter is directed to an archery bow:

In combination:
an archery bow which comprises a riser and first and
second limbs extending in opposite directions from opposite ends of said riser;
at least one pair of components for modifying the decay patterns of the vibrations set up in the bow limbs when an arrow is released; and
a component attachment mechanism mounting one of the pair of vibration decay pattern modifying components to each of the first and second bow limbs;

KSR is cited:

In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior art," and reaffirmed principles based on its precedent that "[t]he 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, 415-16 (2007). The Court further explained that "[i]f a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability" and the operative question is "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.


KSR, 550 U.S. at 418-19 ("the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim" and "obviousness analysis cannot be confined ... by overemphasis on the importance of published articles and the explicit content of issued patents."); see also In re Kahn, 441 F.3d at 987-88.

As to the use of "unexpected results" to rebut a prima facie case of obviousness:

A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Attorney argument is no substitute for such evidence. Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005); In re Schulze, 346 F.2d 600, 602 (CCPA 1965).

As to the need to make all arguments in the brief:

Only those arguments actually made have been considered in this
decision. Arguments that could have been made but not set forth in the briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).


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