Affirmed by the Board of Patent Appeals and Interference on June 25, 2007, Ex parte Carolyn Ramsey Catan is regared as a precedential opinion due to its use of case law concerning KSR v. Teleflex. The question at the heart of the matter was if the “appellant has shown that the Examiner erred in holding the combination” of various patents “would have rendered the subject matter of” the independent claim of the application “obvious to one of ordinary skill in the art at the time of the invention” (p.3 Ex parte Catan). The appellant argued that the invention was supposed to be limited enough to be deemed non-obvious, but the claims as well as the rest of the patent could be read in a broad sense that made the patent obvious.
Obviousness
Substituting elements of one patent for those of another in the same field, yielding a predictable result constitutes as being obvious. The Appellant did not show proof of yielding an unexpected result by the combination of prior art. In citing KSR v. Teleflex it is explained that “[h]ere ‘[an appellant] claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result,’”(p.17 Ex parte Catan).
The full decision can be found here: Ex parte Catan
Obviousness
Substituting elements of one patent for those of another in the same field, yielding a predictable result constitutes as being obvious. The Appellant did not show proof of yielding an unexpected result by the combination of prior art. In citing KSR v. Teleflex it is explained that “[h]ere ‘[an appellant] claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result,’”(p.17 Ex parte Catan).
The full decision can be found here: Ex parte Catan
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