Friday, January 10, 2014

Appellant loses in Ex parte Pantalone

From with Ex parte Pantalone

Appellants contend “that instead of considering the claim as a whole,
the Examiner has dissected the [disputed] feature of claim 1 into discrete elements and evaluated the elements in isolation, which is expressly forbidden by the above-cited section of the M.P.E.P.”2 App. Br. 15. However, this argument relates to a petitionable matter and not to an appealable matter, because it relates to the manner in which examination has been conducted. See In re Schneider, 481 F.2d 1350, 1356-57 (CCPA 1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also MPEP § 1003 (“All unusual questions of practice may be referred to the Technology Center Directors”) and MPEP §§ 1002.02(c)(3) and 1201. Furthermore, we find that the Examiner has provided a sound rejection on the basis of the prior art references that makes obvious the present invention as claimed. Thus, we find that the Examiner has presented a prima facie case of obviousness based on the combination of Lazaridis and Lean and as such find Appellants’ arguments unpersuasive as to a piecemeal examination.

In return, PTAB noted

Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).


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