Monday, April 01, 2013

In re Jung (2011) cited in Ex parte Lee

From Ex parte Lee

Thus, the proposed
modification constitutes a “mere application of a known technique” (i.e.,
Duarte’s menu operation) “to a piece of prior art ready for the improvement”
(i.e., Hama’s cellphone). KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417

Related to petitions:

The Board reviews Examiner’s rejections for errors pertaining to
patentability, particularly in light of Appellants’ arguments. See Ex parte
Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010) (precedential). Thus, if
Appellants seek a more thorough examination in general, they should file a
petition listing the many allegedly neglected features.4

On the other hand, if Appellants need a more thorough discussion of
features at issue on appeal, they must meaningfully explain why the Office
Action and Answer is “so uninformative that it prevents the applicant from
recognizing and seeking to counter the rejection.” In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (citation omitted). Otherwise, Appellants fail to
address – and we likewise will not attempt to address for Appellants – “what
gaps, in fact, exist between [the claimed invention and the applied prior art]
that needed filling by examiner explanation.” Id. at 1363(emphasis added).
In the same respect, if Appellants contend that a cited prior art feature fails
to teach a claimed feature, they must meaningfully explain why.


This is precisely why Appellants must
present meaningful arguments; not just list claim features for the Board to
ponder. See In re Jung, 637 F.3d at 1365 (affirming in part because
appellant “merely argued that the claims differed from [the prior art], and
chose not to proffer a serious explanation of this difference.”); In re Baxter
Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an
appellant[.]”); 37 C.F.R. 41.37(c)(1)(iv) (“A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.”).


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