Thursday, December 27, 2012

Moriguchi cited in Ex parte BARRACLOUGH

From within Ex parte KEITH BARRACLOUGH:

Of written description:

To satisfy the written description requirement, the disclosure must reasonably convey to skilled artisans that Appellants possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). But, “[t]he claims do not run afoul of the written description requirement simply because it is possible to broadly interpret the claims in a way that is not described in the Specification.” Ex parte Moriguchi, 2012 WL 1637675 at *3 (BPAI 2012) (citing cases decided by the U.S. Court of Customs and Patent Appeals).

Of res judicata:

Although it is not clear whether res judicata can be applied to ex parte proceedings before the Board (see In re Craig, 411 F.2d 1333, 1336 (CCPA 1969)), we note that the Board’s previous decision in this case agreed with the Examiner’s finding that “Hamlin’s routing telephone network data to pods and receiving units in the home, constitute ‘a plurality of telephony- based appliances communicatively coupled to the bussing arrangement.” 2008 Board Decision 12 (emphases added).

Lovin is cited:

Appellants’ arguments in their Appeal Brief in opposition to the rejections of claims 3 and 5 are not persuasive because they only recite claim language. An argument that merely points out what a claim recites is unpersuasive. 37 C.F.R. § 41.37(c)(1)(vii). Accord In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”).

Of issues not initially briefed:

Appellants’ Reply Brief raises a number of arguments in opposition to the rejections of these claims. Reply Br. 7, 9. However, these arguments have been raised for the first time in the Reply Brief and are therefore waived. “[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative). “[A]n issue not raised by an appellant in its opening brief . . . is waived.” Optivus Tech., Inc. v. Ion Beam Appl’ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (citations omitted) (internal quotations marks omitted).


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