Wednesday, November 30, 2011

Merck cited by BPAI in affirming obviousness rejection in Ex parte Schoenberg

Non-obviousness cannot be established by attacking references individually when the rejection is predicated on a combination.
Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986).

Of the details

The Examiner applied Harsham simply to show the unremarkable fact that one of ordinary skill knew that using rules to set parameters in a computer system simplified tasks. FF 02. As Kerr describes a medical computer system, Harsham simply shows that one of ordinary skill new that Kerr’s administration could be simplified by using rules. Vulpe shows how to improve the organization of documents using a document management system.

The Examiner applied Vulpe simply to show how one of ordinary skill might implement the records management required by Kerr, with the aid of Harsham’s rules, by using Vulpe’s 21 architecture for records management. Ans. 5.

A separate issue was the offensive use of a provisional application filing date:

The Appellant contends that the Examiner has not shown that the provisional application 60/556,470, filed on March 26, 2004 supports this and that the Examiner did not provide a copy of this document.

This document is available on the Office’s web site under public PAIR. Inspection of this document shows support for describing this limitation at page 13 describing the use of an encryption key to access patient records.


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