Wednesday, April 17, 2013

Appellant loses in Ex parte Linder

Ex parte Linder

The back-and-forth nature of the case:

This application returns to us after another panel of this Board1
affirmed the Examiner’s rejection of then-pending claims 1-44 in part. Ex parte Linder, No. 2008-003899 (BPAI June 25, 2009). Prosecution was reopened after that decision, and Appellants now appeal under 35 U.S.C. § 134(a) from the Examiner’s subsequent rejection of claims 18-24 and 37- 42. Claims 1-17, 25-36, 43, and 44 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).2 We affirm.

Of predictability:

This enhancement predictably uses prior art elements according to their established functions, and involves a creative step well within the skill level of ordinarily skilled artisans. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”).

The decision did not go well for the appellant:

Accordingly, the Examiner’s combining the teachings of Schwalb and Nagata is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion.
Lastly, we are unconvinced of error in the Examiner’s reliance on Schwalb for at least suggesting storing the recited descriptions and instance. Ans. 3, 8 (citing Schwalb, col. 6, ll. 50-60; col. 19, ll. 45-50). Leaving aside the fact that this data must be stored to be operated on,4 we nonetheless see no error in the Examiner’s reliance on these teachings in connection with the recited storing limitation.


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