REVERSED

2400 Networking, Mulitplexing, Cable, and Security
2451 Ex Parte Ahmad et al 09/972,362 HOMERE 103(a)
KONRAD RAYNES & VICTOR, LLP. EXAMINER DIVECHA, KAMAL B

2600 Communications
2627 Ex Parte Santini 10/431,489 SAADAT 103(a)
ZILKA-KOTAB, PC- HIT EXAMINER BLOUIN, MARK S

2628 Ex Parte Bohm et al 11/230,803 SAADAT 103(a)
SIEMENS CORPORATION EXAMINER PRENDERGAST, ROBERTA D

2800 Semiconductors, Electrical and Optical Systems and Components
2816 Ex Parte Elliott et al 10/888,770 MacDONALD 103(a)
King & Spalding LLP EXAMINER TRA, ANH QUAN

2892 Ex Parte Mei et al 11/264,321 MacDONALD 102(b)
HEWLETT-PACKARD COMPANY EXAMINER KRAIG, WILLIAM F

AFFIRMED-IN-PART

1600 Biotechnology and Organic Chemistry
1616 Ex Parte Ryde et al 10/895,405 FREDMAN 112(1)/103(a)/obviousness-type double patenting
Elan Drug Delivery, Inc. c/o Foley & Lardner EXAMINER ALSTRUM ACEVEDO, JAMES HENRY

Falko-Gunter teaches that “we hold that where, as in this case, accessible literature sources clearly provided, as of the relevant date, genes and their nucleotide sequences (here ‘essential genes’), satisfaction of the written description requirement does not require either the recitation or incorporation by reference (where permitted) of such genes and sequences.” Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1368 (Fed. Cir. 2006).

1700 Chemical & Materials Engineering
1765 Ex Parte Matayabas et al 10/876,444 HANLON 103(a)
MISSION/BSTZ BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP EXAMINER SELLERS, ROBERT E

REEXAMINATION

EXAMINER AFFIRMED

3900 Central Reexamination Unit (CRU)
2881 E.F. PRODUCTS, L.P./IDQ HOLDINGS, INC. Respondent v. BRIGHT SOLUTIONS, INC. Patent Owner, Appellant 95/000261 6,590,220 EASTHOM 314(a)/112(1)/112(2)/102(b)/103(a)
Steptoe & Johnson, LLP Third Party Requester: Eric B. Meyertons Meyertons, Hood, Kivlin, Kowert & Goetzel, PC EXAMINER GAGLIARDI, ALBERT J original EXAMINER ANDERSON, BRUCE C

Claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than the material worked upon by the apparatus. In re Schrieber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (popcorn funnel claim anticipated by prior art oil funnel since the latter was capable of working on popcorn according to the function claimed); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”).

Schreiber, In re, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997) . . 2111.02, 2112, 2114

Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 15 USPQ2d 1525 (Fed. Cir. 1990).. . . . . . . . . .2114

AFFIRMED

1600 Biotechnology and Organic Chemistry
1636 Ex Parte Rebar et al 10/055,711 GRIMES 103(a)
ROBINS & PASTERNAK EXAMINER DUNSTON, JENNIFER ANN

1700 Chemical & Materials Engineering
1733 Ex Parte Yamada et al 10/898,967 GARRIS 103(a)
McDERMOTT, WILL & EMERY EXAMINER ROE, JESSEE RANDALL

2800 Semiconductors, Electrical and Optical Systems and Components
2814 Ex Parte Crowley et al 10/662,248 MANTIS MERCADER 102(b)/103(a)
STETINA BRUNDA GARRED & BRUCKER EXAMINER WEISS, HOWARD

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
3662 Ex Parte Mori 10/141,033 STAICOVICI 101/112(1) 37 C.F.R. § 41.50(b)
PHILIP J. POLLICK EXAMINER LOBO, IAN J

The Supreme Court has provided guidance on processes which have not been developed.

Whatever weight is attached to the value of encouraging disclosure and of inhibiting secrecy, we believe a more compelling consideration is that a process patent in the chemical field, which has not been developed and pointed to the degree of specific utility, creates a monopoly of knowledge which should be granted only if clearly commanded by the statute. Until the process claim has been reduced to production of a product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation. It may engross a vast, unknown, and perhaps unknowable area. Such a patent may confer power to block off whole areas of scientific development, without compensating benefit to the public. The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point-where specific benefit exists in currently available form-there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.

Brenner, Comr. Pats. v. Manson, 383 U.S. 519, 523 (1966).

Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966). . . . .2106, 2107.01, 2107.02

3700 Mechanical Engineering, Manufacturing, and Products & Design
3769 Ex Parte Brown 11/451,546 HORNER 103(a)
HEALTH HERO NETWORK, INC. EXAMINER RAJAN, KAI

REISSUE

AFFIRMED

2400 Networking, Mulitplexing, Cable, and Security
2478 Ex Parte Riddle 10/857,806 JEFFERY 251/103(a)
APPLE/FENWICK EXAMINER LIN, KENNY S

As the Supreme Court indicates, “[e]very independent inventor, every mechanic, every citizen, is affected by such delay, and by the issue of a new patent with a broader and more comprehensive claim.” Miller v. Bridgeport Brass Co., 104 U.S. 350, 355 (1881). And “[t]he granting of a reissue for such a purpose, after an unreasonable delay, is clearly an abuse of the power to grant reissues, and may justly be declared illegal and void.” Id. Thus, for broadening reissues, “the rule of laches should be strictly applied; and no one should be relieved who has slept upon his rights, and has thus led the public to rely on the implied disclaimer involved in the terms of the original patent.” Id. at 356.
...

The U.S. Supreme Court all but said as much in Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924). There, a divisional application was filed approximately five years after the parent application was filed in February 1910, but before the parent application issued in 1916. Id. at 464. In June of 1918, however, an amendment was filed in the divisional application adding broader claims that were later patented. Id. at 464-65. Notably, the broadened claims added via this amendment were first presented to the Patent Office eight years and four months after the original application was filed. Id. at 465.

The Court held this delay was unreasonable, noting that the patentee “Kane did not originally intend to assert these amended claims, because he considered their subject-matter one merely of design and not of invention, and the inference is fully warranted that the intention to do so was not entertained prior to 1918.” Id. The Court noted that during all of this time, the subject matter of the broadened claims “was disclosed and in general use, and Kane and his assignee . . . simply stood by and awaited developments.” Id. This was not, however, “the simple case of a division of a single application for several independent inventions, . . . but [rather] a case of unreasonable delay and neglect on the part of the applicant and his assignee in bringing forward claims broader than those originally sought.” Id. at 465-66 (emphases added).

In reaching its decision, the Court relied heavily on equitable principles, particularly as they applied to delays in correcting errors via reissue applications, and adopted a similar two-year time limit for divisional applications. Id. at 471. Although the Court later held that Webster’s presumptive two-year time limit was dictum, the Court nevertheless “ratified prosecution laches as a defense to infringement actions involving new claims issuing from divisional and continuation applications that prejudice intervening adverse public rights.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Res. Found., 277 F.3d 1361, 1364 (Fed. Cir. 2002) (citing Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304 U.S. 159 (1938) and Gen. Talking Pictures Corp. v. W. Elec. Co., Inc., 304 U.S. 175 (1938)). That is, the Court ratified the doctrine of prosecution laches in Crown Cork and General Talking Pictures, but did not apply it in those cases in the absence of intervening rights.

Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 76 USPQ2d 1354 (Fed. Cir. 2005). . . . . .2190

REHEARING

DENIED

3900 Central Reexamination Unit (CRU)
3651 REXNORD INDUSTRIES, LLC Requester and Cross-Appellant v. HABASIT BELTING, INC. Patent Owner and Appellant 95/000,072 6,523,680 ROBERTSON 103
PATENT OWNER: McKenna Long & Aldridge LLP THIRD-PARTY REQUESTER: Daniel G. Radler Quarles & Brady LLP EXAMINER FLANAGAN, BEVERLY MEINDL original EXAMINER BIDWELL, JAMES R