Monday, July 08, 2013

Appellant in Ex parte Furlong wins on obviousness but loses under 35 USC 112

From Ex parte Furlong

A written description rejection under 35 USC 112 P1 is sustained:

The Appellants (App. Br. 7-10; see also Reply Br. 4-6) disagree, citing these passages from the Specification: [0057]; [0062]; [0063]; [0066]; [0068]; and, [0072]. We have reviewed all but [0068] and [0072] which do not appear in the copy of the Specification before us. We do not see in these passages any mention of “periodic access.” While the absence of these terms do not necessarily lead to the conclusion that there is inadequate written descriptive support (see “[T]he prior application need not describe the claimed subject matter in exactly the same terms as used in the claims . . . . ” Eiselstein v. Frank, 52 F.3d 1035, 1038 . . . (Fed.Cir.1995)), nevertheless, “[w]hat is claimed by the patent application must be the same as what is disclosed in the specification; otherwise the patent should not issue.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 736 (2002). (...)

Notwithstanding that the disclosure may suggest repeated accessing of content, the limitation at issue is “periodic access to the license-protected broadcast channel,” and not simply repeated accessing of content. “Periodic,” for example, means, ordinarily and customarily, occurring at regular intervals. It may be obvious to provide “periodic access to the license-protected broadcast channel,” given a disclosure of repeated attempts by the ST to access license-protected content, but “[o]ne shows that one is “in possession” of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. ” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). (Emphasis original).

As to obviousness of dependent claims:

This rejection is directed to claim 7 dependent on claim 1, whose rejection we have reversed above. For the same reasons, we will not sustain the rejection of claim 1 over the cited prior art. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.").

Even though the appellants prevailed on obviousness, they still lost the case:

The decision of the Examiner to reject claims 1-11 is affirmed.


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