Saturday, November 30, 2013

Appellants do not fare well in Ex parte Gontkosky

PTAB cites to KSR and Keller in Ex parte Gontkosky:

Appellants’ arguments are not persuasive. “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).
If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.
Id. at 417. In determining whether obviousness is established by combining the teachings of the prior art, “the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). In addition, a reference disclosure is not limited only to its preferred embodiments, but is available for all that it discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).

Note also

Appellants have provided no evidence of such, and an attorney’s argument cannot take the place of evidence lacking in the record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). (...)
As such, we find that an ordinary skilled artisan would have had a reasonable expectation of success in modifying the press forming device of AAPA with that of Futamura. See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (noting that all that is required is a reasonable expectation of success, not absolute predictability of success).
(...) In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed).


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