Patent Law

The Iliad and the Applicant

By Alloy Comprising

In BPAI decision Ex parte AGARWAL (Appeal No. 2008-2005 / Application No. 11/124,935), the Bard of Patent Appeals and Interferences reversed the Examiner's decision shipwrecking all the claims as obvious over a combination of references.  In the Appeal Brief to the Bard, the Applicant argued:

[T]he statutory command of section 103 charges the Examiner with an impossible task: he must first study Applicant?s disclosure and learn the intricacies of the claimed invention, and then forget what he just learned and view the prior art as one would have seen it at the time the invention was made.

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In this case, the Examiner has been seduced by the siren?s song.  He has reconstructed the prior art with specific knowledge gained from a careful study of Applicant?s disclosure.  However, according to the statutory command, he cannot be Ulysses.  Rather, he must be one of Ulysses? crewmen, who had put wax in his ears to prevent himself from ever hearing the siren?s song.  Of course, it is humanly impossible to simply forget what one has learned.  Such an impossible burden was not even placed on a mythological figure, such as Ulysses.

As a result, the Applicant passed by the three-headed panel of judges, avoided the whirlpool of the Federal Circuit and now plays the part of wandering beggar in order to obtain allowance of the claims.

Full post as published by Benefit of Hindsight on September 02, 2008 (boomark / email).