Monday, December 09, 2013

Mixed decision in Ex parte May

from Ex parte May

As to teaching away

Appellants’ argument does not persuade us that the Examiner’s conclusion is unfounded. A reference is said to “teach away” from a claimed invention when it “suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). That is not the case here. If anything, these references merely illustrate the trade-offs that those of ordinary skill in this art recognize and routinely consider in designing prostheses.

But appellants do win on some "missing elements" rejections:

The Examiner concludes that it would have been obvious for one of ordinary skill in the art “to modify the . . . tibial tray with the porous coating of Incavo in view of Bernero with the inferiorly extending walls of Barnett in order to provide fixation without the use of a threaded screw as taught by Barnett” (id.).
Nevertheless, as Appellants correctly point out, Barnett’s elements 150 are not on the tibial tray at all (see Figures 5 and 6). Rather, they “are provided on a bearing component and are used to interlock with a tibial tray” (App. Br. 10-11).
As the Examiner has not addressed this deficiency in the references, we are constrained to reverse this rejection.


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