Thursday, June 20, 2013

Mixed decision in Ex parte Fairbourn

from within Ex parte Fairbourne

The examiner cites In re Fout,675 F.2d 297, 301 (CCPA 1982 ) as to interchangeability. Siebentritt, 372 F.2d 566, 568 (CCPA 1967) is also cited.

**As to Fout on substitution:

Because both Pagliaro and Waterman teach a method for separating caffeine from oil, it would have been prima facie obvious to substitute one method for the other. Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious. In re Siebentritt, 54 CCPA 1083, 372 F.2d 566, 152 USPQ 618 (1967). Nevertheless, a reason for making the substitution is provided by Waterman, who states: "[C]affeine may be recovered in pure form under the present invention, avoiding the usual more tedious physical and chemical processes." It is to be noted that, in the Pagliaro process, a caffeine/water solution is obtained that would require further processing to recover pure caffeine.

Thus, the Fout case provides a reason for the substitution.

**Within Fout, Nomiya is cited:

This court has recognized that section 102 is not the only source of section 103 prior art.[fn3] Valid prior art may be created by the admissions of the parties. See In re Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611 (CCPA 1975); In re Hellsund, supra, 59 CCPA note 3 at 1387, 474 F.2d at 1311, 177 USPQ at 173; In re Bass, 59 CCPA 1342, 474 F.2d 1276, 177 USPQ 178 (1973); In re Garfinkel, 58 CCPA 883, 887, 437 F.2d 1000, 1004, 168 USPQ 659, 662 (1971); In re LoPresti, 52 CCPA 755, 333 F.2d 932, 142 USPQ 176 (1964); Turner, Admissions as Prior Art Under 35 U.S.C. ยง 103, 52 J.Pat.Off.Soc'y 249 (1970). Nor is it disputed that certain art may be prior art to one inventive entity, but not to the public in general. See In re Nomiya, supra, 509 F.2d at 571 n.5, 184 USPQ at 611 n.4 (both footnotes are the same, despite the different numbering).

We hold that appellants' admission that they had actual knowledge of the prior Pagliaro invention described in the preamble constitutes an admission that it is prior art to them. The Pagliaro process was appellants' acknowledged point of departure, and the implied admission that the Jepson format preamble of claim 1 describes prior art has not been overcome. It is not unfair or contrary to the policy of the patent system[fn4] that appellants' invention be judged on obviousness against their actual contribution to the art.

KSR and Rouffet are also cited in Ex parte Fairbourne.


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