PTAB anticipation/obviousness decision reversed since prior art did not disclose the claimed device “arranged as claimed”

In Re: Stepen Brian Gates, Jeremy Black

Docket No. 2018-2331
October 16, 2019

Brief Summary: PTAB appeal decision affirming the examiner’s anticipation and obviousness rejections reversed and remanded since the prior art did not disclose the claimed device “arranged as claimed”.

Summary: Patent applicant Gates appealed PTAB decision affirming the examiner’s rejection of the claims of their ‘668 application directed to an integrated handheld device that can operate via a computer mouse or a remote control depending on the proximity of the device to a surface (e.g., a table) for anticipation and obviousness. The claims include a “Mode-Switching Limitation” and a “Wherein Clause”. The claims were rejected as anticipated (§ 102(a)) in view of “Tiphane” (US Pub. No. 2003/0028688) and obvious over Tiphane in view of Rogers (US 6,794,992) and/or Meyer (US 6,882,334). Gates unsuccessfully argued to the PTAB that “the embodiments in Tiphane are distinct and therefore fail to disclose” the Mode-Switching Limitation and the Wherein Clause “the limitations are arranged and claimed in the ‘668 application”, the PTAB finding that those embodiments “have ‘the “same mechanical means” for automatically transition[ing] from a second operational mode…to a first operational mode” (“a person of ordinary skill in the art would…readily envisage an embodiment…that meets the Wherein Clause”). The FC panel reviewed the PTAB’s “factual findings for substantial evidence” (anticipation, In re Rambus (FC 2012); Net MoneyIN, FC 2008 (“anticipated only if each limitation is found within a single prior art reference, ‘arranged or combined in the same way as the claim’”) “and its legal conclusions de novo” (obviousness, Polaris Ind. (FC 2018)). The FC panel found that “[s]ubstantial evidence does not support the [PTAB’s] finding that Tiphane discloses a device that would satisfy both the Mode Switching Limitation and the Wherein Clause, arranged as claimed” (e.g., “[n]othing in Tiphane indicates that the second embodiment would include the ‘same mechanical means’ as the first embodiment” or “how the features of the two embodiments could be combined in a single device”). Thus, the FC panel reversed and remanded the PTAB’s finding of anticipation. The obviousness rejection was also reversed and remanded since that finding “is based on its finding that Tiphane discloses every limitation of claim 1”.

This entry was posted in Anticipation (35 USC 102), Obviousness, Uncategorized. Bookmark the permalink.

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