Wednesday, August 12, 2009

BPAI: Applicants Must Do More Than Recite Missing Features To Traverse Prior Art

Ex Parte Belinne, No. 2009-004693 (10 August 2009) (Informative Opinion)

The appeal involved an invention relating to activating services when configuring a "build to order" system. The Examiner rejected the claims as anticipated over a single prior art reference ("Lee"), and provided citations to allegedly disclosed features. The Appellants argued that the Examiner "failed to explain how the relied upon prior art reference discloses an element of the claim."

A good portion of Appellant's arguments consisted of a re-recitation of claimed features, where purportedly missing features were highlighted:

Lee does not teach or suggest a computer implemented system for enabling configuration of an information handling system which includes a configurator, a service activation module for enabling a user to activate a service for use on an information handling system, and a database where database receives information from and supplies information to the configurator and the service activation module, all as required by claim 1. Accordingly, claim 1 is allowable over Lee. Claims 2 - 6 depend from claim 1 and are allowable for at least this reason.
According to the BPAI, "[t]he Appeal Brief presents no other arguments beyond those quoted above." Not surprisingly, the BPAI objected to this type of argumentation:

In our review, we find that the Examiner has made extensive specific fact finding, as detailed supra, with respect to each of the argued claims. Appellants' argument, as detailed supra, repeatedly restates elements of the claim language and simply argues that the elements are missing from the reference. However, Appellants do not present any arguments to explain why the Examiner's explicit fact finding is in error. Arguments not presented in the Appeal Brief "will be refused consideration by the Board, unless good cause is shown" ' (i.e., are waived). In contrast, the Examiner findings address each claim limitation raised on appeal by Appellants and also these findings reference specific teachings in Lee as showing these claim limitations.

Weighing as a whole the Appellants' arguments, which are not supported by further explanation, that the elements are missing and the Examiner's specific and detailed findings, we reach a conclusion that Appellants have not shown error in the Examiner's finding of anticipation based on Lee regarding claims 1- 16.

Read/download the opinion here (link)

1 Comentário:

MaxDrei said...

Thanks Mr Zura for picking out this case. I see it as an example of a lawyer putting words into the mouth of his/her client that a reasonable person would never utter. This behaviour seems to me to fall short of serving the best interests of the client.

Thus, here, the lawyer (who absolutely fails to do any "explaining" whatsoever) has the downright effrontery to assert on behalf of his client that:

"the Examiner "failed to explain how the relied upon prior art reference discloses an element of the claim.""

One imagines the hapless client under cross-examination, first being shown the Examiner's writings and asked if they constitute any sort of explanation, then being shown his own written assertions (as drafted by his lawyer) and asked whether he still thinks that:

"the Examiner "failed to explain how the relied upon prior art reference discloses an element of the claim.""


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