Thursday, June 20, 2013

Rejection affirmed in Ex parte MASLOWSKI

From Ex parte Maslowski

Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the Examiner’s
proposed combination, Weder satisfies the limitation directed to a preformed

Of substitution:

Substitution denotes replacing
one thing with another, not adding something in addition to what is already
present. In the instant case, the Examiner reasons that wrapping the
container after it is preformed amounts to a simple substitution that is
nothing more than a predictable variation of incorporating the shielding into
the container in a single process. Id. The Examiner’s proposed combination
of Van De Weijer and Weder is supported by articulated reasoning with
rational underpinning. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418

Of purpose:

It is not necessary for the prior art to serve the same purpose as
that disclosed in Appellants’ Specification in order to support the conclusion
that the claimed subject matter would have been obvious. See In re Linter,
458 F.2d 1013, 1016 (CCPA 1972). “A reference may be read for all that it
teaches, including uses beyond its primary purpose.” In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012), citing KSR, supra at 418-421.

Of the use of the term "comprising"

Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501
(Fed.Cir.1997) (comprising transition means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim).


Post a Comment

<< Home