1700 Chemical & Materials Engineering
Ex Parte Kajinic et al OWENS 103(a) FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
The effect preamble language is to be given is determined by reviewing the entirety of the Appellants’ disclosure to gain an understanding of what the Appellants actually invented and intended to encompass by the claim. See Corning Glass Works v. Sumitomo Electric, 868 F.2d 1251, 1257 (Fed. Cir. 1989).
MPEP 2111.02, 2163
2100 Computer Architecture and Software
Ex Parte Larson et al DIXON 103(a) HEWLETT-PACKARD COMPANY
The Federal Circuit recently recognized that "[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416). The Federal Circuit relied in part on the fact that Leapfrog had presented no evidence that the inclusion of a reader in the combined device was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art." Id. at 1162 (citing KSR, 550 U.S. at 418).
Leapfrog MPEP 2143.01
KSR MPEP 2141 to 2145, 2216, 2242, 2286, 2616, 2642, 2686.04
2600 Communications
Ex Parte Beazley HOFF 102(e)/103(a) THOMSON LICENSING LLC
2800 Semiconductors, Electrical and Optical Systems and Components
Ex Parte Van Oers et al SAADAT 102(e)/103(a) PHILIPS INTELLECTUAL PROPERTY & STANDARDS
Ex Parte Guthrie et al WHITEHEAD, JR. 103(a) CONLEY ROSE, P.C.
3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Zug et al STAICOVICI 103(a) FRIEDRICH KUEFFNER
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
MPEP 2142
Ex Parte Valli O’NEILL 103(a) YOUNG & THOMPSON
3700 Mechanical Engineering, Manufacturing, and Products & Designs
Ex Parte Viljanen et al O’NEILL 112(1) YOUNG & THOMPSON
“In deciding the issue [of written description], the specification as a whole must be considered.” In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
MPEP 2163, 2163.03
Ex Parte Worrick et al PATE, III 103(a) THE PROCTER & GAMBLE COMPANY
“[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
MPEP 904.01, 2106, 2111, 2163, 2173.05(a), 2181
Ex Parte Walker et al PATE, III 103(a) FISH & RICHARDSON PC
Reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05, (CCPA 1969).
MPEP 2106, 2111, 2172, 2173.05(a), 2173.05(q), 2411.01
