The Board’s Lee decision(s)
You can pull down a copy of the BPAI’s remand decision(s) in In re Lee here. The copy is a pdf; it starts with the Board’s denial of rehearing, and continues with the Board’s June 2006 remand decision. The Federal Circuit affirmed the Board’s decision yesterday, as I noted.
Joe,
Thanks for posting the In re Lee BPAI rehearing and hearing decisions (latter is lower down in the PDF).
This looks to be a tough and close case. I looked only at the Wakai reference (4,398,834). In the end the question is what would have a PHOSITA of the relevant date gleaned as being the “teaching” of each of the references. The Examiner and Board made their findings of fact as to what PHOSITA would have gleaned. Applicant did not submit rebuttal evidence as to a different set of gleanings. (Applicant only provided argument of counsel, which argument does not substitute for “evidence”.) So the BPAI’s findings of fact as to this question remains unchallenged by rebuttal evidence.
As to the Wakai 4,398,834 watch disclosure, I’m not a PHOSITA living at the relevant time. So I’m not sure what “teachings” I would have inferentially drawn at the relevant time from that reference taken in whole.
It’s a close case. But since the only “evidence” that is apparently on record are the findings of the Examiner, the CAFC had no choice but to affirm under the substantial evidence rule. This was not at all a KSR case. (It was decided by the BPAI before KSR came down on 4/30/07.) Thanks again for hunting it down.
Comment by step back — January 24, 2008 @ 4:27 am