Saturday, January 20, 2018

DOMINICK THERESA of Edison, NJ appearing pro se before the CAFC, loses

Of note as to anticipation of a claim using the word "or":

Theresa’s first argument is that the Board erred in
ignoring the limitations of claims 1, 5, 20, and 24, involving
marking the labels with “symbols,” even though none
of the cited references disclosed the use of symbols.
(Slater only used words or numbers.) This argument is

First, claim 1 requires marking the labels with “preset
words or pre-set symbols.” J.A. 416 (emphasis added).
“When a claim covers several structures or compositions,
either generically or as alternatives, the claim is deemed
anticipated if any of the structures or compositions within
the scope of the claim is known in the prior art.” Brown v.
3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (citing Titanium
Metals Corp. of Am. v. Banner, 778 F.2d 775, 782 (Fed.
Cir. 1984)). Thus, since Slater undisputedly disclosed the
use of pre-determined words, claim 1 can be obvious in
light of the prior art even without a reference to symbols.
So too with dependent claim 5, which includes a limitation
that builds on the alternative limitation in claim 1,
while preserving the alternative options.

As to using a reference for ALL that it teaches:

Theresa also contends the Board erred in relying on
Erickson for use of a color-coded system in conjunction
with memory devices, because Erickson’s claimed invention
focused on the RFID tags. True, Erickson’s reference
to color-coded file folders related to the combination of the
RFID system therein with a third-party system that
already existed. But Erickson need not be limited to the
invention claimed therein; it may be cited for all that it
teaches. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir.
2006) (“[T]he teaching of [a reference] is not limited to the
specific invention disclosed.”).

When a reference says "just one example," the examiner and Board
can infer others:

Though Slater disclosed labels for keys, it acknowledged
that keys were “just one example” of how the colorcoded
system disclosed therein could be used. J.A. 461
¶ 16. “The need for such a product can be found in a
number of places where people carry multiple objects that
appear the same,” such as pill bottles or toothbrushes.
Id.; see also J.A. 460 ¶ 6 (noting that similar labels exist
to identify circuit breakers or storage boxes and to convey
further information about the labeled items). The examiner
found, and the Board agreed, this indicated that
Slater’s system could be successfully applied to a set of
Yu’s flash memory devices, and Erickson had already
taught the application of a color-coding system to memory
devices. J.A. 16–17, 350–51


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