Wednesday, October 23, 2013

Appellant wins on obviousness in Gelber

On inherency at the Board, from Ex parte Gelber

“In relying upon the theory of inhere
ncy, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
from the teachings of the applied prior art.”
Ex parte Levy
, 17 USPQ2d
1461, 1464 (BPAI 1990). In this case, the question raised is whether the
gaming terminal of Kelly is
capable of normalizing bonus tokens
received from another gaming terminal

Fine was cited:

Since speculation and conjecture cannot form the basis for concluding
obviousness, the rejection of independe
nt claims 1, 11, and 20 and their
respective dependent claims 2, 3,
5-10, and 12-19 under 35 U.S.C. § 103(a)
as unpatentable over Kelly
cannot be sustained.
See In re Fine,
837 F.2d
1071, 1076 (Fed. Cir. 1988).


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