Board affirms obviousness and refers to Applicant specification for advantages of adding secondary reference

Takeaway: The Applicant appealed an obviousness rejection of claims directed to a process of manufacturing stents. Though the Final Office Action relied on advantages taught by the secondary reference, the Advisory Action also mentioned advantages disclosed in the Applicant's specification. The Appeal Brief argued that these Applicant-known advantages actually showed that the secondary reference was non-analogous art. The Board affirmed the obviousness rejection. Though the Decision mentioned advantages taken from the secondary reference, the Board also appeared to impermissibly rely on the Applicant-known advantages as a reason to combine. (Ex parte Sciver, PTAB 2014.)

Details:

Ex parte Sciver
Appeal 2012011728; Appl. No. 12/748,271; Tech. Center 1700
Decided:  October 31, 2014

The application was directed to systems methods for coating a stent with a drug.

Board finds swear-behind declaration to be insufficient for lack of explanation

Takeaway: The Applicant attempted to remove a reference with a § 1.131 (swear-behind) declaration. The two-page declaration referred to an Appendix A included in the provisional application but did not comment or explain on the Appendix. The Board found that the Applicant had not provided any of the evidence needed to show conception, reduction to practice, or diligence. "[T]here is no explanation of what the document in Appendix A is; whether it purports to establish conception or actual reduction to practice; what diligence, if any, the inventors can show in reducing the invention to practice; and how it discloses the claimed invention." (Ex parte Schmidt, PTAB 2014.)

Details:
Ex parte Schmidt
Appeal 2012005120; Appl. No. 10/156,131; Tech.Center 2600
Original Decision:  May 29, 2014; Rehearing Decision:  Sept. 12, 2014

In response to a prior art rejection in a Non-Final Office Action, the Applicant attempted to remove a reference with this § 1.131 (swear-behind) declaration:

Board ignores qualifier "discrete" and interprets "connected to" to allow indirect connections

Takeaway: In an appeal of claims to a memory controller, the Board gave no weight to the qualifier "discrete," and interpreted "connected to" as allowing indirect connections rather than requiring direct connections. (Ex parte Morrow, PTAB 2008.)

Details:
Ex parte Morrow
Appeal 2007-3972; Appl. No. 10/027,978; Tech. Center 2100
Decided: May 8, 2008

The application on appeal was directed to a memory controller for a computer system. Two of the independent claims on appeal read:

     14. An apparatus, comprising:
     a memory controller; and
     a table walk device connected to the memory controller and externally located from a memory management unit (MMU).

     23. A system, comprising:
     a processor;
     a discrete memory controller adapted to perform a table walk operation and coupled to the processor; and
     a volatile memory device coupled to the discrete memory controller.