Saturday, April 27, 2013

Ratti cited in Ex parte Kuehn

Ex parte Kuehn

Of teaching away:

Silence as to a feature of the claims is not a teaching away. DyStar Textilfarben GmbH
v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will not
read into a reference a teaching away from a process where no such
language exists.”).

Yes, In re Best is cited:

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.… Whether the rejection is
based on „inherency‟ under 35 U.S.C. § 102, on „prima facie obviousness‟
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO‟s inability to manufacture
products or to obtain and compare prior art products.)

Change in basic principles:

“A change in the basic principles” refers to
change that is fundamental in scope to the scientific or technical principles
under which the invention is designed to operate. In re Ratti, 270 F.2d 810,
813 (CCPA 1959) (“This suggested combination of references would require
a substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [primary reference] construction was designed to operate.”). It cannot be
said that “change in the basic principles” occurs by all modifications of a
prior art device which changes the manner in which the device operates.

Otherwise, even nominal modification to a prior art device could be
considered a “change in the basic principles,” thereby eliminating the need
for obviousness analysis under 35 U.S.C. § 103. As noted above, we do not
agree that Grayson teaches away from a pre-seal. For substantially the same
reasons, we are not persuaded that the Examiner‟s modification changes
Grayson‟s principle of operation or destroys its intended purpose.


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