Tuesday, June 04, 2013

Papesch cited in Ex parte Fischer

The appellant loses in Ex parte Fischer

Of law:

“From the standpoint of patent law, a compound and all of its
properties are inseparable; they are one and the same thing.” In re Papesch,
315 F.2d 381, 391 (CCPA 1963).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
The motivation to combine references does not have to be identical to
the applicants to establish obviousness. In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996).

Of unexpected results:

The Examiner finds Appellant’s evidence of unexpected results to be
unconvincing and not commensurate in scope with the pending claims.
(Ans. 15-17.) We also are not persuaded by Appellant’s evidence of
unexpected results. To begin, Appellant relies on comparative results set
forth in Table 1, pages 29-30 of the Specification.

The bottom line

The cited references support the Examiner’s obviousness rejection.
Appellant’s evidence of unexpected results is not commensurate in scope
with the pending claims.


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