Wednesday, December 24, 2014

Appellant Robinson loses at PTAB on teaching away, motivation to combine

Appellant, represented by MCDONNELL BOEHNEN HULBERT & BERGHOFF   , lost at PTAB in the case Ex parte Robinson 

As to the obviousness:

Appellants argue that the Examiner
has failed to establish a prima
facie case of obviousness because Gold
stein teaches away from the claimed
invention, one of ordinary skill would
not combine the cited references, and
the combination does not teach or suggest all claim limitations.

As to "teaching away":

Whether the prior art teaches away
from the claimed invention is a
question of fact.
Dystar Textilfarben GmbH v. C.H. Patrick Co
., 464 F.3d 1356, 1360 (Fed. Cir. 2006);
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.
2005). It is well established that a prior art reference
must be considered in
its entirety, i.e., as a whole, when determining
if it would lead one of
ordinary skill in the art away
from the claimed invention.
W.L. Gore &
Assoc, Inc. v. Garlock, Inc.
, 721 F.2d 1540, 1550 (Fed. Cir. 1983);
cf. Para–
Ordnance Manufacturing, Inc. v. SGS Importers International, Inc.,
73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach aw
ay, a reference must state that a
feature “should not” or “cannot” be used
in combination with other features
in the prior art.).

Of the concept of "no patentable significance":

Having considered the record before
us, we find no reversible error in
the Examiner’s determination that combining or
duplicating certain process
units has no patentable significance
unless a new and unexpected result is
produced. Final Action 4–5, 8; Ans.
3. We find Appellants have not
provided any evidence that there is
any new or unexpected result, only
attorney argument as to a
“system that is both commercially functional and
commercially feasible for the intended
purpose” (App. Br. 12) and this lacks
merit both because attorney argument is
not evidence and because the claims
are not so limited.


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