Monday, February 11, 2013

Examiner reversed in Ex parte Kissel

Footnote 5 of Ex parte Kissel is of interest:

The Examiner stated in the Answer that “[e]very ground of rejection set forth in the Office action from which the appeal is taken (as modified by any advisory actions) is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading ‘WITHDRAWN REJECTIONS’” (Ans. 3). The Answer does not include a section with the subheading “WITHDRAWN REJECTIONS.”

Of law

“[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. Verisign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
The words of the claim must be given their plain meaning unless the plain meaning is inconsistent with the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). (...)
“claims are not to be read in a vacuum, and limitations therein are to be interpreted in light of the specification in giving them their ‘broadest reasonable interpretation.”’ In re Marosi, 710 F.2d 799, 802 (Fed. Cir. 1983) (quoting In re Okuzawa, 537 F.2d 545, 548 (CCPA 1976) (emphasis by Marosi). This is the standard for claim interpretation in both original examination and re-examination. In re Yamamoto, 740 F.2d 1569, 1571-73 (Fed. Cir. 1984).


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