Wednesday, December 24, 2014

Hewlett-Packard loses Rees case at PTAB

Ex parte Rees is a Hewlett-Packard case about a method of constructing a machine-readable document.

PTAB cites In re Fine, 837 F.2d 1071, 1074 (CAFC  1988) for the requirements for a prima facie case of obviousness.

The Fine case notes

The PTO has the burden under section 103 to establish a prima facie case of obviousness. See In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed.Cir.1984). It can satisfy this burden only by showing some objective teaching in the prior art or that knowledge generally available to one of ordinary skill in the art would lead that individual to combine the relevant teachings of the references. In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.Cir.1984); see also Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 n. 24, 227 USPQ 657, 667 n. 24 (Fed.Cir.1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.Cir.1984). This it has not done. The Board points to nothing in the cited references, either alone or in combination, suggesting or teaching Fine's invention.

The text in the PTAB decision is a bit different.  PTAB also cited In re Kahn for "articulated reasoning."

The outcome of the Fine case

The Board's decision affirming the Examiner's rejection of claims 60, 62, 63, 68, 69, 77, 79, 80, 85 and 86 of Fine's application as unpatentable over the prior art under 35 U.S.C. Sec. 103 is

However, in the Rees case PTAB affirmed the rejection for obviousness.

Although there was a missing element as to claim 1, PTAB noted "Titemore [a reference] suggests it would have been obvious."  PTAB criticized the Appellants for not providing reasoning beyond stating the element was missing.  Thus, one needs to explicitly argue why the references don't suggest the missing element. 


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