Monday, March 11, 2013

"Articulated reasoning" discussed in Ex parte Moffatt

From Ex parte Moffatt

The examiner lost on indefiniteness rejections:

Further, because
the MOVs are movable components (Spec. ¶ [0064]), only routine skills
would be required to place the MOVs near the other components in such a
way for the MOVs to have substantially the same electrical potentials as
those of the adjacent electrical components. We thus agree with Appellant
that the Examiner erred in rejecting claim 1 as being indefinite.

Regarding claim 2, the Examiner concludes that because MOVs are
resistor elements that do not have polarity, the recitation of orienting the
MOVs in alternating polarity renders the claim indefinite. (Ans. 4.) We find
error in this rejection as well.


Regarding claims 6 and 8, the Examiner concludes that because safety
cannot be measured or objectively estimated, the recitation of advertising
that the surge protector is safer renders the claim indefinite. (Ans. 4-5.) We
find merit in that rejection. We find that the recited limitation is not
functionally tied to the invention to thereby to achieve the task of improving
a surge suppressor as set forth in preamble of claims 6 and 8. We find the
disputed limitation to be speculative at best, and does not further define or
clarify how the surge protector is improved. Consequently, we will sustain
this rejection.

KSR appears:

Next, regarding the lack of logical reason to modify argument, we
note that U.S. Supreme Court has held that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex, Inc., 550
U.S. 398, 416 (2007). The Court further instructs that:
[o]ften it will be necessary for a court to look to interrelated
teachings of multiple patents; . . . and the background
knowledge possessed by a person having ordinary skill in the
art, all in order to determine whether there was an apparent
reason for combining the known elements in a the fashion
claimed by the patent at issue.
Id. at 418.

Additionally, the Court instructs that:

rejections on obviousness grounds cannot be sustained by mere
conclusory statements. Instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.… [H]owever, the analysis need not
seek out precise teachings directed to the specific subject matter
of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in
the art would employ.
Id. (citation omitted).

As to the TSM test:

While it may be necessary for an Examiner
to identify a reason for combining the familiar elements obtained from the
prior art in establishing a prima facie case of obviousness, the identification
of such a reason is not a sine qua non requirement. So long as the Examiner
provides an articulated reasoning with some rational underpinning to
substantiate the obviousness rejection, such a conclusion is proper. In this
case, the Examiner provides more than just a mere conclusory statement.


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