Tuesday, February 12, 2013

Requestor prevails in inter partes re-exam 95/001,311

In United Exchange v. HeatMax, an appeal of rejections in an inter partes re-exam [95/001,311 of US 6,936,018 ], the Patent Trial and Appeal Board [PTAB] affirmed the Examiner's Rejections.

The format of the decision grouped rejections with grounds, e.g.,

--> Rejection 1 (Ground 5)

--> Rejections 2, 3 and 5 (Grounds 6, 7, 9)

In terms of law, Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) is cited

Whereas the wrap illustrated does not include any inelastic features on the pouch, we decline to read such a limitation from the specification into the claim because the claim language is broader. See Superguide, 358 F.3d at 875. We find no reasonable basis to conclude that this limitation would be understood by one of ordinary skill in the art when reviewing the specification so as to preclude any inelastic portion on an elastic pocket

Note also:

Rejection 4 (Ground 8)

The Examiner rejects claim 3 as anticipated by Lerner (RAN 18). However, claim 3 has been rejected as unpatentable in three different rejections, namely, Rejections 1, 2 and 6 discussed supra. Thus, we find it unnecessary to reach this rejection.


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