Thursday, July 14, 2011

"Obvious design choice" in BPAI's Ex parte Henderson

Inventor Henderson got no traction at the BPAI, losing out on both written description and obviousness.

Of written description, Henderson argued that his patent application, including the Specification and Drawings, disclose an integrated circuit. The BPAI response: we do not find that simply showing a circuit as a box equates to an integrated circuit.

Of obvious design choice, the BPAI noted:

We note that making elements of a device integral or separable is considered to be an obvious design choice and does not render an invention patentable. See In re Larson, 340 F.2d 965, 968 (CCPA 1965); In re Dulberg, 289 F.2d 522, 523 (CCPA 1961).

KSR was cited as to combining KNOWN elements:

Thus, combining each of these elements into a single unit represents nothing more than a combination of known devices, which when combined yield the predictable result of an integrated read-reset circuit. KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

**Recall the citation to Translogic made by the CAFC in the Kimberly-Clark case:

See In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed.
Cir. 2007) (“[O]bvious variants of prior art references are
themselves part of the public domain.”).

see IPBiz post
Kimberly-Clark v. First Quality: preliminary injunctions

See also


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