Appeal 2007-1305
Application 09/725,394
1 improve similar devices in the same way, using the technique is obvious unless its
2 actual application is beyond that person’s skill.” Id. “Under the correct analysis,
3 any need or problem known in the field of endeavor at the time of invention and
4 addressed by the patent can provide a reason for combining the elements in the
5 manner claimed.” Id. at 1732, 82 USPQ2d at 1397.
6 Obviousness and Nonfunctional Descriptive Material
7 Nonfunctional descriptive material cannot render nonobvious an invention that
8 would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d
9 1862, 1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ
10 401, 404 (Fed. Cir. 1983) (when descriptive material is not functionally related to
11 the substrate, the descriptive material will not distinguish the invention from the
12 prior art in terms of patentability).
13
14 ANALYSIS
15 Claims 1-10 rejected under 35 U.S.C. § 103(a) as obvious over Schneider and
16 Fucarile.
17 The Appellant argues claims 1, 2, and 4-10 as a group. Accordingly, we select
18 claim 1 as representative of the group. We address the Appellant’s arguments
19 regarding claim 3 separately below.
20 Initially, we note that although the Appellant has disclosed a way to automate
21 the recording of patent assignments, the Appellant has chosen to draft the claims,
22 and claim 1 in particular, far more broadly. As noted above, during patent
23 prosecution, claims are construed as broadly as is reasonable. Hence, the claimed
24 transfer of property reads on any such transfer, not merely recorded assignments.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013