Wednesday, July 17, 2013

Appellant wins on 112 issues, but still loses overall under 103

from within Ex parte Glydon

As to written description:

As our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983)3:

The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter, rather than the presence or absence of literal support in the specification for the claim language. . . . The content of the drawings may also be considered in determining compliance with the written description requirement. [Citations omitted.]
It is the Examiner’s burden to establish a prima facie case of non- patentability based on the written description requirement by presenting evidence or reasons establishing why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).

In an effort to carry that burden, the Examiner asserts that the application disclosure as originally filed does not provide adequate written descriptive support for claim 32.

The examiner was reversed:

In this regard, we observe that an ipsis verbis disclosure is not necessary to satisfy the written description requirement of § 112. Instead, the disclosure need only reasonably convey to persons skilled in the art that the inventor had possession of the subject matter in question. See In re Edwards 568 F.2d 1349, 1351-52 (CCPA 1978).
On this appeal record, we determine that the Examiner has not established that claims 32, and 35-39 lack written descriptive support within the meaning of 35 U.S.C. § 112, first paragraph in the subject Specification, as filed.

Of indefiniteness:

In this regard, “the indefiniteness inquiry asks whether the claims ‘circumscribe a particular area with a reasonable degree of precision and particularity.’” Marley Mouldings Ltd. v. Mikron Industries Inc., 417 F.3d 1356, 1359 (Fed. Cir. 2005), quoting In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).

Related to obvious design choice:

In light of the above and contrary to Appellant’s arguments, the evidence of record reflects that one of ordinary skill in the art exercising routine skill would have recognized the option of organizing the arrangement of different types of multiple products in a package and have been led to correlate the population of the package compartments with the type of product, apertures, and surface markings in an organized manner so as to result in a packaged product corresponding to that claimed. See KSR, 550 U.S. at 416 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”).

Common sense is mentioned:

Moreover, common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning." Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009).

Although the appellant won on 112 issues, the appealed claims were remained rejected under 103, and the examiner's decision was affirmed.


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