Wednesday, October 30, 2013

"Undersea Warfare Center" loses on written description and obviousness

The appellant did not do well in Ex parte Dunn

The appellant seemed to make the wrong argument as to written description:

The Appellant’s arguments address the interpretation of “a passageway communicating with a source of exhaust gas and at a single point” and its support in the Specification but do not address the phrase “as an only point,” which is the basis of the Examiner’s rejection. Br. 7. Therefore, the Appellant’s arguments are not persuasive, and we sustain the Examiner’s rejection of the claim under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.

As to obviousness, part of appellant's arguments related to "loss of function"

The Appellant further argues that “if a prior art reference is cited that requires some modification in order to achieve what is claimed . . . yet if that modification destroys the purpose or function of the invention as disclosed in the reference and at a similar operating condition, one of ordinary skill in the art would not have found a reason to make the modification nor would it be obvious to try to make the modification.” Br. 10-11. The Examiner responds that the “propulsion unit and/or teachings of Kobayashi would not be destroyed by provision of a single inlet . . . as long as the mass flow and densities of the mixing exhaust gas and water remain the same” and “Kobayashi sets forth no criticality for any specific number of points of exhaust gas introduction.” Ans. 8. The Appellant’s argument is not persuasive because the Appellant has not shown how providing a single hole would destroy the purpose or function of Kobayashi.

Bottom line: For the above reasons, the Examiner’s rejections of the claim are


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