Tuesday, May 07, 2013

KSR invoked in Ex parte IANNIZZARO

The rejections of the Examiner are sustained in Ex parte IANNIZZARO

Of teaching away:

However, a
reference does not teach away if it merely discloses an alternative invention
but does not “criticize, discredit, or otherwise discourage” investigation into
the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed.Cir. 2004).
Appellants have not directed us to any language in Gulick that criticizes,
discredits or otherwise discourages investigation into integrating a filter
element into a motor housing.

Of analogous art

A reference qualifies as prior
art for an obviousness determination when it is analogous to the claimed invention.
Innovention Toys, LLC. v. MGA Entertainment, Inc., 637 F.3d
1314, 1321 (Fed. Cir. 2011). “Two separate tests define the scope of
analogous art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004).

KSR is invoked:

“It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007).


A person of
ordinary skill in the art would not have been restricted to the shape and size
of Gulick’s structure when combining the teachings of Gulick and either
Smith or Berg. In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”)


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