antonie, kyocera, epstein, eli lilly

REVERSED

1600 Biotechnology and Organic Chemistry
1622 Ex Parte Maschmeyer et al 10/490,028 GREEN 103(a) OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P. EXAMINER OH, TAYLOR V

3700 Mechanical Engineering, Manufacturing, and Products & Design
3714 Ex Parte Loose et al 09/821,195 O’NEILL 103(a) NIXON PEABODY LLP EXAMINER
MOSSER, ROBERT E

For an obviousness rejection to be maintained, the combination of elements selected from each reference in combination must represent the claimed invention as a whole. See In re Antonie, 559 F.2d 618, 619 (CCPA 1977) (“Just as we look to a chemical and its properties when we examine the obviousness of a composition of matter claim, it is this invention as a whole, and not some part of it, which must be obvious under 35 U.S.C. § 103.”) (emphasis original).

Antonie, In re, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). . . . . . . . . .. . . . . . .2141.02, 2144.05

3753 Ex Parte Hoshi et al 09/893,522 O’NEILL 102(b)/103(a) KRATZ, QUINTOS & HANSON, LLP EXAMINER FOX, JOHN C

3766 Ex Parte Harris et al 10/958,210 O’NEILL 103(a) SHUMAKER & SIEFFERT, P. A. EXAMINER BERTRAM, ERIC D
AFFIRMED-IN-PART

2400 Networking, Mulitplexing, Cable, and Security
2421 Ex Parte Kitsukawa 09/802,635 KOHUT 103(a) ROGITZ & ASSOCIATES EXAMINER LONSBERRY, HUNTER B

3700 Mechanical Engineering, Manufacturing, and Products & Design
3772 Ex Parte Koerner et al 10/777,257 LEBOVITZ 112(1)/102(a) FLYNN THIEL BOUTELL & TANIS, P.C. EXAMINER PATEL, NIHIR B

AFFIRMED

2100 Computer Architecture and Software
2162 Ex Parte Dettinger et al 11/165,386 COURTENAY 102(e)/103(a) IBM CORPORATION, INTELLECTUAL PROPERTY LAW EXAMINER GOFMAN, ALEX N

2179 Ex Parte Lauterbach et al 10/676,364 COURTENAY 102(b) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP EXAMINER AUGUSTINE, NICHOLAS

Cf. Kyocera Wireless Corp. v. International Trade Com'n, 545 F.3d 1340, 1351 (Fed Cir. 2008) (“The record evidence suggests that the GSM standard is not a single reference. The different specifications that comprise the GSM standard were authored by different subsets of authors at different times. Indeed, the GSM standard includes hundreds of individual specifications drafted by approximately ten different subgroups, each with its own title and separate page numbering. Each specification, though part of the greater GSM standard, stands as a separate document in its own right. Even Qualcomm's witness-admittedly one of the most knowledgeable people in the world about the operation of GSM-testified that she had not read the entire standard and did not know of any person who had read the entire standard. Open Session Tr. 1712, Mar. 15, 2006. Under these circumstances, the GSM standard is actually several prior art references with separate dates of creation, rather than a single prior art reference.”).

...

The Examiner also cites In re Epstein, 31 USPQ2d 1817 (Fed. Cir. 1994). (See Ans. 11). In Epstein, our reviewing court determined that the Board did not err in determining that various third-party software products were “in public use or on sale” more than one year before Applicant’s filing date based upon abstracts which indicated when the products were “first installed” or “released” more than one year prior to Applicant’s filing date.

...

Under this approach to establishing anticipation, the multiple references are not separate anticipatory references; rather, it is the single device that anticipates a claim if the multiple references (or other evidence) establish that the single device had all the claimed features and was in public use or was offered for sale “more than one year prior to the date of the application for patent in the United States.” (Id.).

Epstein, In re, 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) . . . 716.07, 2128, 2133.03(b)
2185 Ex Parte Farrell 11/218,994 HOMERE 103(a) FLETCHER YODER (MICRON TECHNOLOGY, INC.) EXAMINER DINH, NGOC V

2187 Ex Parte Cochran et al 10/798,962 HUGHES 103(a) HEWLETT-PACKARD COMPANY EXAMINER BRADLEY, MATTHEW A

2400 Networking, Mulitplexing, Cable, and Security
2444 Ex Parte Fang 09/962,861 NAPPI 102(e) KACVINSKY DAISAK PLLC C/O CPA Global EXAMINER CLOUD, JOIYA M

2451 Ex Parte He 10/222,059 NAPPI 103(a) Anderson Gorecki & Manaras, LLP Attn: John C. Gorecki EXAMINER MADAMBA, GLENFORD J

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
3663 Ex Parte Cheung et al 12/000,644 CALVE 112(1)/112(2)/103(a) HARNESS, DICKEY & PIERCE, P.L.C. EXAMINER LEACH, ERIN MARIE BOYD

3700 Mechanical Engineering, Manufacturing, and Products & Design
3732 Ex Parte Bergersen 10/449,312 McCARTHY 102(b)/non-statutory double patenting PATENTS+TMS, P.C. EXAMINER LEWIS, RALPH A

From a general perspective, the Examiner’s duty in rejecting a claim for obviousness-type double patenting is the same as a Court’s duty when holding a claim invalid on the same ground:

Generally, an obviousness-type double patenting analysis entails two steps. First, as a matter of law, a court construes the claim in the earlier patent and the claim in the later patent and determines the differences. Second, the court determines whether the differences in subject matter between the two claims render the claims patentably distinct. A later claim that is not patentably distinct from an earlier claim in a commonly owned patent is invalid for obvious-type double patenting. Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed. Cir. 2001) (internal citations and footnote omitted).

Eli Lilly & Co. v. Barr Laboratories, Inc., 251 F.3d 955, 58 USPQ2d 1869 (Fed. Cir. 2001) . . . . .804, 2144.08, 2165, 2165.01

REHEARING

DENIED

2100 Computer Architecture and Software
2192 Ex Parte Asare et al 10/726,192 BARRY 102(b)/101 CAREY, RODRIGUEZ, GREENBERG & PAUL, LLP STEVEN M. GREENBERG EXAMINER DAO, THUY CHAN