Ex Parte Whitmyer - Page 11

           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.      


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