REVERSED

1600 Biotechnology and Organic Chemistry
Ex Parte Modi GRIMES 102(b)/103(a) HAMILTON, BROOK, SMITH & REYNOLDS, P.C.

Ex Parte Merlau et al SCHEINER 103(a) ROHM AND HAAS COMPANY

2100 Computer Architecture and Software
Ex Parte Galloway DIXON 102(a)/103(a) WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI, L.L.P.

MPEP 716.10 Attribution
Under certain circumstances an affidavit or declaration may be submitted which attempts to attribute an activity, a reference or part of a reference to the applicant. If successful, the activity or the reference is no longer applicable. When subject matter, disclosed but not claimed in a patent application filed jointly by S and another, is claimed in a later application filed by S, the joint patent or joint patent application publication is a valid reference available as prior art under 35 U.S.C. 102(a), (e), or (f) unless overcome by affidavit or declaration under 37 CFR 1.131 showing prior invention (see MPEP § 715) or an unequivocal declaration by S under 37 CFR 1.132 that he or she conceived or invented the subject matter disclosed in the patent or published application. Disclaimer by the other patentee or other applicant of the published application should not be required but, if submitted, may be accepted by the examiner.

Ex Parte Tsui et al DANG 102(b)/103(a) CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP, STEVEN M. GREENBERG

2600 Communications
Ex Parte Russo HAHN 103(a) PATTERSON & SHERIDAN, L.L.P.

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Weiss et al LORIN 103(a) FAY SHARPE LLP

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Taggart et al O’NEILL 103(a) NELSON MULLINS RILEY & SCARBOROUGH, LLP

In order to establish a prima facie case that a clam is obvious based on teachings of prior art references, the Examiner must articulate some “reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). The Examiner’s reasoning can have no rational underpinning where the proposed modification would render the primary reference being modified unsatisfactory for its intended purpose. See Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (Where the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, the proposed modification would not have been obvious).

AFFIRMED-IN-PART

1700 Chemical & Materials Engineering
Ex Parte Cullen COLAIANNI 103(a) MATTHEW A. NEWBOLES, STETINA BRUNDA GARRED & BRUCKER

A modification to the prior art which renders it inoperable for its intended purpose effectively teaches away from the modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).

Ex Parte George HASTINGS 102(b) HOVEY WILLIAMS LLP

“Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).

2100 Computer Architecture and Software
Ex Parte Stern et al COURTENAY 103(a) PILLSBURY WINTHROP SHAW PITTMAN, LLP

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Atlee et al LORIN 103(a) BUCHANAN INGERSOLL PC

Ex Parte Foster et al LORIN 102(b)/103(a)/112(2) 37 C.F.R. § 41.50(b) SCHWEGMAN, LUNDBERG & WOESSNER/EBAY

3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Haugen HORNER 102(b)/103(a) DAVID READ, NATIONAL VEHICLE AND FUEL EMISSIONS LABORATORY