REVERSED

1700 Chemical & Materials Engineering
Ex Parte Rapp et al SMITH 103(a) FITZPATRICK, CELLA, HARPER & SCINTO

Ex Parte Andricacos et al HASTINGS 103(a) CONNOLLY, BOVE, LODGE & HUTZ LLP

Ex Parte Ikeuchi et al GARRIS 102(B)/103(a) OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, LLP

Ex Parte Glorioso WARREN 102(b) VOLPE AND KOENIG, P.C.

2100 Computer Architecture and Software
Ex Parte Fair LUCAS 102(b) DAVIS BUJOLD & DANIELS, P.L.L.C.

2600 Communications
Ex Parte Fischer et al HOFF 102(e)/103(a) BAKER BOTTS L.L.P.

The determination of obviousness must consider, inter alia, whether a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success in doing so. Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed. Cir. 2000). Where the teachings of two or more prior art references conflict, the Examiner must weigh the power of each reference to suggest solutions to one of ordinary skill in the art, considering the degree to which one reference might accurately discredit another. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). Further, our reviewing court has held that "[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Para-Ordnance Mfg., Inc. v. SGS Importers Int’l., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).

2800 Semiconductors, Electrical and Optical Systems and Components
Ex Parte Lin et al KRIVAK 102(b)/103(a) NXP, B.V.

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Crombez et al PATE III 103(a) BROOKS KUSHMAN P.C./FGTL

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Mathias et al GRIMES 102(e) COOK ALEX LTD.

BILSKI - AFFIRMED-IN-PART

2100 Computer Architecture and Software
Ex Parte Forman JEFFERY 101/103(a) HEWLETT-PACKARD COMPANY

In determining whether a claim as a whole is directed to an abstract idea, a key distinction has been drawn between (1) claims that seek to wholly pre-empt the use of a fundamental principle, and (2) claims that are merely limited to foreclosing others from using a particular application of that fundamental principle. See In re Bilski, 545 F.3d 943, 957 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964).

AFFIRMED-IN-PART

2100 Computer Architecture and Software
Ex Parte Schlegel THOMAS 102(b)/112(2) 37 C.F.R. § 41.50(b) BUCHANAN INGERSOLL & ROONEY, PC

2400 Networking, Mulitplexing, Cable, and Security
Ex Parte Dettinger et al COURTENAY 102(e) IBM CORPORATION

2800 Semiconductors, Electrical and Optical Systems and Components
Ex Parte Lee et al GAUDETTE 102(b)/103(a) HEWLETT-PACKARD COMPANY

“An element of a claim described as a means for performing a function, if read literally, would encompass any means for performing the function. But section 112 ¶ 6 operates to cut back on the types of means which could literally satisfy the claim language.” Johnston v. IVAC Corp., 885 F.2d 1574, 1580 (Fed. Cir. 1989) (emphasis and citations omitted). As stated by our reviewing court in B. Braun Med., Inc., v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997):

[S]tructure disclosed in the specification is ‘corresponding’ structure only if
the specification or prosecution history clearly links or associates that
structure to the function recited in the claim. This duty to link or associate
structure to function is the quid pro quo for the convenience of employing §
112, ¶ 6.

In Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1382 (Fed. Cir. 1999), our reviewing court further stated that the particularity requirement of 35 U.S.C. § 112, second paragraph, requires that the corresponding structure(s) of a means-plus-function limitation … [is] disclosed in the written description in such a manner that one skilled in the art will know and understand what structure corresponds to the means limitation. Otherwise, one does not know what the claim means. It has also been established that for means-plus-function claiming, all disclosed embodiments covered by the claim must be enabled. Sitrick v. Dreamworks, LLC., 516 F.3d 993 (Fed. Cir. 2008).

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Brown et al BAHR 103(A) GREENBLUM & BERNSTEIN, P.L.C.

Ex Parte Kirmoto et al McKELVEY 103(a) DELAND LAW OFFICE