Monday, November 25, 2013

Examiner affirmed in Ex parte VAN LIESHOUT

In Ex parte VAN LIESHOUT , the appellants won on written description but lost on obviousness.

As to non-functional descriptive material:

As a general proposition, merely reciting what data or information represents (e.g., “consistent service availability” information) constitutes non-functional descriptive material, because the information does not further limit the claimed invention either functionally or structurally. Here, the recitation “consistent service availability information” merely describes what the information elements represent. Such information does not limit the claimed steps either functionally or structurally. Rather, the information is merely being transmitted and provided. Thus, the recited information elements are properly considered to contain non-functional descriptive material that do not patentably distinguish over the prior art. See In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); see also Ex parte Nehls, 88 USPQ2d 1883, 1887-89 (BPAI 2008) (precedential) and Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005), aff’d (Fed. Cir. No. 2006-1003, June 12, 2006).

As to the issue of waiver

Moreover, such an argument is untimely and waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”).


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