Monday, February 11, 2013

Opinion by McKelvey in Ex parte TAMMAJI

The Board decision in Ex parte TAMMAJI was written by FRED E. McKELVEY .

Note the text: Following a procedure suggested in Ex parte Braeken, 54 USPQ2d 1110,
1111 (BPAI 1999), the subject matter of Claim 6 is described as follows: (...)

Note the text: Johnson appears to differ from the subject matter of Claim 6 in that Johnson
does not explicitly described the claimed intrinsic viscosities. Rather, Johnson
describes viscosities in terms of relative viscosities. See Stevens for a brief
discussion of relative viscosity and intrinsic viscosity.

with a section from the Stevens book attached to the opinion.

Note the text:

Thus, on this record, applicant has not shown that the result alleged to
have been achieved by the compositions, as broadly claimed, is in fact obtained.
In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (inventor must show that the
results the inventor says the inventor gets with the invention are actually obtained
with the invention). See also McClain v. Ortmayer, 141 U.S. 419, 429 (1891)
(conclusive evidence needed to establish new function). The “results” must be
commensurate in scope with the breadth of the claims.

[IPBiz notes Klosak and McClain were both cited in Ex parte Wacker Chemie AG, also issued
on Feb. 11, 2013.]

Note the text:

From a practical point of view, the USPTO is in no position
to determine whether relative viscosities of Johnson are the same as the intrinsic
viscosities of Iohara. However, one skilled in the art attempting to succeed in
using the Johnson process would necessarily seek to use polymers having suitable
viscosities. Broadly speaking, the Iohara polymers and the Johnson polymers are
used for the same general purpose, viz., to make filaments and yarns.

As to teaching away:

Applicable precedent holds that a reference may be said to
teach away when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004), cited by the Examiner. Answer, page 8.
See also United States v. Adams, 383 U.S. 39, 52 (1966). We perceive no reason
why one skilled in the art would not be informed by the intrinsic viscosity
disclosure of Iohara as to suitable intrinsic viscosities of polymers to be used in the
Johnson process.

Note text:

It is generally prima facie
obvious to combine two compositions each of which is taught by the prior art to be
useful for the same purpose in order to form a third composition which is also used
for that purpose. See In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980), reaffirming a
long-standing principle of law, In re Crockett, 279 F.2d 274, 276 (CCPA 1960).


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