Monday, March 11, 2013

Ex parte Burgermeister discusses use of figures as prior art

From within Ex parte Burgmeister:

On the use of figures as prior art:

Since the Examiner has failed to identify textual teachings in Burgermeister
regarding the specific arc dimensions, reliance on Figure 4A is insufficient
since figures are not necessarily to scale and Figure 4A does not necessarily
define precise geometries of the arc. See In re Nash, 230 F.2d 428, 431
(CCPA 1956) (“[I]t is well settled that the drawings of patent applications
are not necessarily scale or working drawings....”); In re Olson, 212 F.2d
590, 592 (CCPA 1954) (“Ordinarily drawings which accompany an
application for a patent are merely illustrative of the principles embodied in
the alleged invention claimed therein and do not define the precise
proportions of elements relied upon to endow the claims with patentability.”)

As to "obvious design choice," -->

We are not persuaded since the Examiner lacks evidence that
changing the arc geometry was a known and obvious design choice. A
finding of obvious design choice is precluded in this instance because
Appellants have set forth reasons why the difference between the claimed
invention and the prior art would result in a different function. See In re
Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate
where the applicant fails to set forth any reasons why the differences
between the claimed invention and the prior art would result in a different

In re Best is cited:

We are not persuaded. The evidence of Duerig (FF 5) combined with
the teaching in the Specification that non-uniform cross sections will result
in more uniform stress (see, e.g., FF 1) are sufficient for the Examiner to
reasonably find that Duerig’s tapering of the struts would inherently satisfy
the functional requirement of claim 8 “to achieve near-uniform stress, strain,
or stress and strain distribution along the radial component”. See In re Best,
562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior
art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”)

Appellants provide no evidence to rebut the inherency argument, providing only attorney argument
without specific evidence. (...)
Appellants have failed to direct us to evidence showing any contrary result. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). (...)
This is an inherency
argument, and Appellants have provided no evidence that the stent of Limon
in view of Gomez would not achieve the required strain distribution. Best,
562 F.2d 1252, 1255 (CCPA 1977).

And, yes, KSR appears:

Such a combination is merely a “predictable use of prior
art elements according to their established functions.” KSR, 550 U.S. at 417.

The result is a mixed bag:

In summary, we reverse the rejection of claims 1, 2, 4-7, and 22-28
under 35 U.S.C. § 103(a) as obvious over Duerig and Burgermeister.
We affirm the rejection of claims 8 and 13 under 35 U.S.C. § 103(a)
as obvious over Duerig and Burgermeister. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(2006), we also affirm the rejection of claims 9, 10, and 12, as
these claims were not argued separately.
We affirm the rejection of claim 30 under 35 U.S.C. § 103(a) as
obvious over Limon and Gomez.


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