Friday, January 18, 2013

Obviousness affirmed in Shepherd

from Ex part SHEPHERD

Of written description:

Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). One shows possession “by such descriptive means as words, structures, figures, diagrams, formulas, etc. that fully set forth the claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Here, we find that at least Appellants’ Fig. 2 sufficiently describes the use of a “normal” browser prior to transitioning to a secure browser and then returning control back to the original browser (i.e., the normal browser).

Keller is cited

Thus, Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981)(“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted, emphasis added). This reasoning is applicable here and Appellants have failed to rebut the collective teachings.

Although the written description rejection was reversed, the ultimate finding of non-patentability was affirmed.


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