Ex parte Isoyama, Appeal 2009-006066 (BPAI 2011). Judge Courtenay III.
Posted Sunday, January 9, 2011 by Jim Ruttler
In this decision relating the patentability of computer system claims, the Board sustained the examiners 103 rejections based upon three separate prior art references.
In reaching this conclusion, the Board first indicated that limitations of the specification cannot be read into the claims. The Board also indicated that the applicant cannot attack the references in isolation because the examiner may pick and choose teachings from any of the references. Lastly, the Board indicated that KSR allows the combination of the references because they are in the “same general field” as the claimed invention.