Thursday, December 27, 2012

Nonfunctional descriptive material discussed in Ex parte Kerr

Within Ex parte Kerr

To teach away, prior art must “criticize, discredit, or otherwise discourage the solution claimed.” Mere disclosure of alternative embodiments is not a teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

Nonfunctional descriptive material cannot render nonobvious an invention that would otherwise have been obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Ex parte Curry, 84 USPQ2d 1272, 1274 (Bd. Pat. App. & Int. 2005); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-90 (BPAI 2008) (precedential) (discussing cases pertaining to non-functional descriptive material).

When descriptive material is not functionally related to the substrate, the descriptive material will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1993).


We agree with the Examiner that Appellants may not show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). Further, Appellants’ arguments are not commensurate in scope with the claim. The Examiner relies on Fitzgerald only for a teaching of “archiving the mediums in a storage area” (Ans. 15). We agree with the Examiner that Fitzgerald teaches this limitation (Ans. 15-16).

The rejections of Eastman Kodak's claims was affirmed.

KSR was cited for the basic concept of obviousness:

Section 103(a) forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’

KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 406 (2007).


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