Thursday, February 07, 2013

The Board discusses negative limitations in Ex parte Chu

from within Ex parte Chu

A rejection for lack of written description was sustained:

We agree with the Examiner that the Specification does not describe how the multimedia metadata are used to determine the format so as to evidence possession. Appellants identify paragraphs [28], [36], [37], and [40] along with figure 3 to describe and support possession of this feature at the time of filing. From our review of these identified portions, we do not find express written description support or clear implicit written description support to evidence possession at the time of filing. We find the identified portions of Appellants' Specification merely disclose that the data is converted to a format that is playable by the digital device without identifying how this is done, with or without user interaction.

As to negative limitations:

Appellants' Reply Brief contains similar arguments and contends there is no requirement that a negative limitation be expressly mentioned in the Specification for the claims to comply with written description requirement. (Reply Br. 4-5). We disagree with Appellants and note that more than mere silence is required. Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). ("Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.") Appellants have not identified any reason to exclude the identified limitation. Therefore, Appellants' have not shown error in the Examiner's finding of a lack of written description support for the claimed subject matter, and we will sustain the rejection of claims 1-19 and 22.

As to automating a manual procedure:

We conclude that the mere automation of the manual determination does not distinguish the claimed invention. In re Venner, 262 F.2d 91, 95 (CCPA 1958) (holding that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art.); cf. Leapfrog Enter., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (replacing prior art mechanical device with modern electronics held obvious).


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