Wednesday, January 01, 2014

Appellant loses on obviousness in Ex parte Lee

The appellant in Ex parte Lee lost: On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-13 under 35 U.S.C. §103(a).

Lovin is cited

Appellant presents no substantive arguments regarding the claims other than merely restating the limitations called for in the claims. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the 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.”).

As to obviousness:

We also note that all elements of a prior art reference need not read on the claimed invention; rather, the proper test for obviousness is what the combined teachings would have suggested to a person of ordinary skill in
the art. See In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000). In an obviousness analysis, it is not necessary to find precise teachings directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In this regard, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." Id. at 421.


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