Florida Patent Lawyer Blog

Ex parte Nakamura involved a box-like positioning apparatus that included various moving parts. The claim element at issue stated that the amount or distance a particular moving member can be moved was limited to a particular distance. The Examiner gave this claim element short shrift, likening it to a non-existent limitation. But the Board disagreed and found this to be a tangible, structural claim limitation. The Board stated: "as a matter of claim construction, in giving the claim terms thereof the broadest reasonable interpretation consistent with the specification, we agree with Appellants that claim 1 specifies ... thus specifying a structural configuration." See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010) (quoting In re ICON Health & Fitness, Inc., 496 F.3d 1374,1379 (Fed. Cir. 2007) (citing In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997).

The case of Ex parte Yufa involved an apparatus for detecting particles using beams of light. At issue was a claim element that did not appear to be present in the original specification. The Board found the disputed claim element did not have support in the initial disclosure and therefore the 35 U.S.C. 112, 1st paragraph, rejection was affirmed.

The Appellant first made some weak arguments that certain ambiguous language in the original specification disclosed the disputed subject matter. This was quickly rejected by the Board. The Appellant then argued that the drawings disclosed the disputed matter. But absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value. In re Wright, 569 F.2d 1124, 1127 (CCPA 1977). Accordingly, in the absence of such a disclosure, the Board agreed that the disputed subject matter did not have support in the original disclosure such that the disclosure of the application did not reasonably convey to the artisan that the inventor had possession of the claimed subject matter. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).

The lesson here is that if you find yourself fighting a 35 U.S.C. 112, 1st paragraph, rejection, make sure you can point to solid language in the specification that clearly supports the disputed subject matter. Pointing to drawings may not pass muster.

The case of Ex parte Byers involved an online marketplace for selling healthcare products. The Applicant submitted a 1.132 Affidavit in support of its arguments and the Board found it insuficient to rebt the Examiner's prima facie case of obviousness. Specifically, the Board stated: "the conclusory statements in the Declaration are merely factual representations of his opinions."

The Board has broad discretion as to the weight to give to declarations offered in the course of prosecution. See Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003)("[A]ccord[ing] little weight to broad conclusory statements [in expert testimony before the Board] that it determined were unsupported by corroborating references [was] within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate.") cf. Ashland Oil, Inc. v. Delta Resins & Refactories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)("Opinion testimonytestimony rendered by experts must be given consideration, and while not controlling, generally is entitled to some weight. Lack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination." (citations omitted)). Although there is "no reason why opinion evidence relating to a fact issue should not be considered by an examiner," In re Alton, 76 F.3d 1168, 1175 n.10 (Fed. Cir. 1996). The Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations. See Velander, 348 F.3d at 1371; Ashland Oil, 776 F.2d at 294. In re American Academy of Science, 367 F.3d 1359, 1368 (Fed. Cir. 2004).