REVERSED

1600 Biotechnology and Organic Chemistry
Ex Parte Johnson et al LEBOVITZ 112(1) THE PROCTER & GAMBLE COMPANY

“To satisfy the written description requirement in the case of a chemical or biotechnological genus, more than a statement of the genus is normally required. One must show that one has possession, as described in the application, of sufficient species to show that he or she invented and disclosed the totality of the genus.” Carnegie Mellon University v. Hoffmann-La Roche Inc. , 541 F.3d 1115, 1126 (2008).

1700 Chemical & Materials Engineering
Ex Parte Mizushima et al SMITH 102(b)/102(e)/103(a) OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, L.L.P.

To anticipated Appellants’ claimed invention, a reference must lead one of ordinary skill in the art to a product which falls within the scope of the claim "without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference." In re Arkley, 455 F.2d 586, 587 (CCPA 1972).

Ex Parte Ramsden et al COLAIANNI 103(a) Carestream Health, Inc.

As stated in In re Rinehart,

When prima facie obviousness is established and evidence is submitted in
rebuttal, the decision-maker must start over. Though the burden of going forward
to rebut the prima facie case remains with the applicant, the question of
whether that burden has been successfully carried requires that the entire path
to decision be retraced. An earlier decision should not, as it was here, be
considered as set in concrete, and applicant's rebuttal evidence then be
evaluated only on its knockdown ability. Analytical fixation on an earlier
decision can tend to provide that decision with an undeservedly broadened
umbrella effect. Prima facie obviousness is a legal conclusion, not a fact.
Facts established [sic] by rebuttal evidence must be evaluated along with the
facts on which the earlier conclusion was reached, not against the conclusion
itself.

531 F.2d 1048, 1052 (CCPA 1976).

Rinehart, In re, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) . . . . . . . . . . . . . . .2107.02, 2142, 2143.02, 2144.04

Ex Parte Tsuzaki et al SMITH 103(a) OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTADT, L.L.P.

Ex Parte Hannington DELMENDO 101/112(1) HEIDI A. BOEHLEFELD RENNER, OTTO, BOISELLE & SKLAR, LLP

“[T]he PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure.” In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995). Thus, it is “[o]nly 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.” Id.

Brana, In re, 51 F.3d 1560, 34 USPQ2d1436 (Fed. Cir. 1995) . . . . . . . . . . . .2106, 2107.01, 2107.03, 2164.01(c) , 2107.02, 2164.02, 2164.04, 2164.07

2100 Computer Architecture and Software
Ex Parte Friauf et al COURTENAY 103(a) DALE F. REGELMAN QUARLES & BRADY, LLP

Invention or discovery is the requirement which constitutes the foundation of
the right to obtain a patent . . . unless more ingenuity and skill were required
in making or applying the said improvement than are possessed by an ordinary
mechanic acquainted with the business, there is an absence of that degree of
skill and ingenuity which constitute the essential elements of every invention.

Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood, 52 U.S. 248, 267 (1850))

AFFIRMED-IN-PART

2400 Networking, Mulitplexing, Cable, and Security
Ex Parte Sakata HOFF 102(e)/103(a) MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
Ex Parte Kasiviswanathan et al MOHANTY 102(e) HEWLETT-PACKARD COMPANY