Thursday, March 01, 2012

Ex Parte McClung: insufficient disclosure in provisional

Ex Parte McClung is a case wherein the provisional application did NOT give support to the nonprovisional claims as filed. [See for example page 13 of the decision]. The Board cited In re NTP, 654 F.3d 1279, 1291 (CAFC 2011). There was an issue of uncorroborated testimony.

There was an issue of overlapping ranges, and the Board cited In re Peterson, 315 F.3d 1325, 1329 (CAFC 2003) [a slight overlap in range creates a prima facie case of obviousness]

In re Bozek 416 F.2d 1385 is cited for using a reference for all it fairly teaches. In re Fritch, 972 F.2d at 1264-5 is also cited.

An argument about collaboration appears on page 16 of the decision. The appellant argued that Lokkesmoe and Oakes, in collaboration, did not arrive at the use of deionized water, but the problem with that argument is that Lokkesmoe alone used deionized water. Thus, the collaboration argument was dead on arrival.

Within Finding of Fact 1, at page 6 of the decision, the Board notes that Lokkesmoe disclosed in Example 18 the use of ionized water AND the Appellant cited the example.

AllThingsPros on Ex parte McClung:

While the Applicant maintained that the collaborating co-inventors did not contemplate using deionized water, Table 18 of Lokkesmoe disclosed the use of deionized water in an exemplary composition that also included the hydrogen peroxide and glycolic acid ingredients of the rejected claims. Furthermore, the Applicant was aware of this disclosure in Lokkesmoe, since the Appeal Brief had cited this very same Table 18 composition in arguing a different point, to establish that "the one example disclosed in Lokkesmoe utilizing glycolic acid, used significantly less than 50 weight percent of water."

"Common sense" appears on page 17 of the decision, with a citation to Perfect Web Techs., 587 F.3d 1324 (CAFC 2009)

There is discussion of the terminology "consisting essentially of," with citation to PPG Indus., 156 F.3d 1351 and to Norian, 363 F.3d 1321.

There is discussion of criticality of range, unexpected results, with citation to In re Klosak, 452 F.2d 1077 and Ex parte Ishizaka, 24 USPQ2d 1621.

Attorney statements are insufficient to establish unexpected results. In re Geisler, 116 F.3d 1465, 1470-1 (CAFC 1997). Attorney arguments are not evidence. C. R. Bard, 911 F.2d 670.

There is citation to Sud-Chemie v. Multisorb, 554 F.3d 1001 (CAFC 2009).


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