Monday, October 14, 2013

Patent holder loses in appeal of Inter partes Reexamination 95/000,564

Inter partes Reexamination 95/000,564

As to "written description,"

To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Although the written description requirement under § 112 does not demand (1) any particular form of disclosure, or (2) the Specification recite the claimed invention verbatim, a description that merely renders the invention obvious does not satisfy the requirement. Id. at 1352 (citations omitted).

AND, as to procedure,

Leaving aside the fact that Appellant fails to provide pinpoint citations to this unspecified “prior response,” Appellant’s reliance on an earlier response that requires us to search to record to determine Appellant’s position on appeal is improper. “It is essential that the Board . . . should be provided with a brief fully stating the position of the appellant with respect to each issue involved in the appeal so that no search of the record is required in order to determine that position.” MPEP 2675 (emphasis added). We therefore decline to consider Appellant’s unspecified earlier position here, for it was not articulated with particularity in Appellant’s Brief.


n re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”).


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