Monday, April 01, 2013

Appellant prevails on written description but otherwise loses

On March 27, 2013 at a PLI course in New York City, former USPTO Director David Kappos (now at Cravath) presented some statistical information on affirmances at PTAB. The most likely outcome of an appeal to the Board is affirmance of the Examiner.

However, IPBiz notes that "affirmance" does not necessarily mean that all parts of a rejection are affirmed. For example, in Ex parted Weaver, decided 1 April 2013, the case counts as an "affirmance" although the Examiner's rejection under 35 USC 112 paragraph 1 was reversed:

Appellant argues on pages 6-9 of the Brief that the Examiner’s
rejection under 35 U.S.C. § 112 first paragraph is in error. This argument
presents us with the issue: did the Examiner err in finding that the originally
filed Specification demonstrates that the Appellant possessed the limitations
of elements [a], [b], and [c] as recited in exemplary independent claim 17?

We have reviewed Appellant’s arguments in the Brief, the Examiner’s
rejection and the Examiner’s response to the Appellant’s arguments. We
agree with Appellant’s arguments that the Examiner erred in finding that the
originally filed Specification fails to demonstrate that Appellant possessed
the limitations of creating first and second schemas, and creating a third data
model and a data storage in a data wedge by integrating the first schema and
the second schema into the data wedge, as recited in independent claim 17.

Appellant cites to paragraphs 0022, 0024, 0036, 0037, and 0038 of the
originally filed Specification as evidence that the Appellant possessed the
limitations of elements [a], [b], and [c]. Br. 6-9; see also Spec. Figures 1
and 2. We concur and will not sustain the Examiner’s rejection of claims
17-31 under 35 U.S.C. § 112 first paragraph.

No case law on written description was cited by PTAB in Weaver.

Other rejections were sustained. As to 102(e), Chef America was cited:

Therefore, the phrase
“storing/data storage” is to be given its plain meaning unless inconsistent
with the Specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989);
Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1372 (Fed. Cir.


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