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PTAB.US: Decisions of PTAB Patent Trial and Appeal Board

Wednesday, June 17, 2009

REVERSED

1600 Biotechnology and Organic Chemistry
Ex Parte Bhat et al ADAMS 101/112(1) ARNOLD & PORTER LLP
a nucleic acid molecule
[T]he PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure. . . . Only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention’s asserted utility. See In re Bundy, 642 F.2d 430, 433 (CCPA 1981).

Ex Parte Stefely et al ADAMS 103(a) 3M INNOVATIVE PROPERTIES COMPANY
medicinal aerosol
Lederer et al. US
3,281,377 Oct. 25, 1966
Ono et al. US
5,342,940 Aug. 30, 1994
Duan et al. US
5,725,841 Mar. 10, 1998
Obviousness requires a teaching or suggestion of all the elements in a claim (CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)) and "a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

2600 Communications
Ex Parte Yamazaki et al SAADAT 103(a) FISH & RICHARDSON P.C.
system for identifying an individual using a sensor-incorporated display for reading the biological information of a user
Nishimura US
6,040,810 Mar. 21, 2000
Wang US
6,175,922 B1 Jan. 16, 2001
Harkin US
6,327,376 B1 Dec. 4, 2001 (filed Dec. 3, 1998)
Ritter US
6,657,538 B1 Dec. 2, 2003 (filed Sep. 28, 1999)
The evidence of record is insufficient to show obviousness if it merely suggests “to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.” In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).

2800 Semiconductors, Electrical and Optical Systems and Componenents
Ex Parte Chatterjee et al GRIMES 103(a) TEXAS INSTRUMENTS INCORPORATED
method of manufacturing a semiconductor device
Nei et al., U.S. Patent
6,342,941 B1, issued Jan. 29, 2002
Tsuo, U.S. Patent
5,041,361, issued Aug. 20, 1991

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Kawai et al KERINS 102(b)/103(a) OLIFF & BERRIDGE, PLC
sheet presser employed to press down, onto a supporting surface, a portion of a document being fed through
Hasegawa US
5,825,513 Oct. 20, 1998