Friday, April 26, 2013

PTAB cites In re Lovin against IBM arguments

In Ex parte
, IBM did win reversal
on two claims, but lost the rest of the appeal.

The appellants did win by arguing claim 6

We therefore conclude that
the Examiner erred in finding that the
combination of Suzuki and Lee teache
s or suggests the disputed limitation
of claim 6.

But arguments directed specifically to
claim 33 did not succeed:

The Examiner responds that Appellants’
argument is no more than a
general allegation instead of showing
distinction between claimed features
and cited prior art and that Lee teaches
or suggests the disputed limitations
of claim 33. Ans. 16 (citing
Lee, ¶¶ [0084]; [0094]; [0100]).
We agree with the Examiner that Appellants’ contentions, with
respect to claim 33, amount to no more
than a general allegation that the
claim defines a patentable invention.
Ans. 16. Accordingly, Appellants fail
to show error in the Examiner’s rejection.
See In re Lovin
, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (interpreting Rule 41.37).

from footnote 1:

Appellants also appeal the Examiner’s
rejection of claims 1, 3, and 5
under 35 U.S.C. § 112(b). Ap
p. Br. 4. Because the
Examiner withdrew the
rejection of the claims on this ground,
we need not reach that issue in this
appeal. Ans. 3. Claims 9-27 a
nd 30 are cancelled. App. Br. 2.


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