Tuesday, December 24, 2013

Appellants lose in Ex parte BEHR

PTAB affirmed the examiner in Ex parte BEHR

In re Thorpe is cited

We are not persuaded of Examiner error on this basis because if the product in the product-by-process claim is the same as, or obvious from, a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).


This argument is not persuasive as Appellants have not pointed to, and we do not see, a claim limitation requiring the gear teeth to be cast with the crankshaft and drive gear wheel. Unclaimed limitations cannot impart patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

BRI arose

However, during examination, “the PTO must give claims their broadest reasonable construction consistent with the specification. Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).


Nonobviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., Inc. 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981)).


Kara Tech. Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The patentee is entitled to the full scope of his claims, and we will not limit him to his preferred embodiment or import a limitation from the specification into the claims.”) (citation omitted).

The correspondence in the case was to Patent Central of Hollywood, Florida.


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