By Richard Neifeld, Neifeld IP Law, PC.1
The Board published an opinion 6/26/2013 as a new informative opinion. Ex parte Talkowski, (PTAB 5/24/2013)(Opinion by Senior APJ McKelvey, for a panel consisting of APJs McKelvey, Best, and Praiss). The Board published the opinion at: http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd2012002290_ex_parte_talkowski_.pdf
There are two interesting things about this opinion.
The first interesting thing is the conclusion that “Applicant DuPont likely knew of the Wakabayashi/Register research.” The issue here is that the Applicant, DuPont, had only disclosed the Wakabayashi 1 abstract, and not the Wakabayashi 2 and 3 papers, all of which were 102(b) available references. And it was the Board that independently discovered Wakabayashi 2 and 3 when investigating if the Wakabayashi 1 Abstract had resulted in a publication. The Board’s analysis then relied upon the “Wakabayashi publications” in its analysis of obviousness, ultimately affirming the rejection of the examiner, and expressly noting that the Board had “relied on Wakabayashi 2 and Wakabayashi 3.” While reading the opinion, I kept expecting the Board to at least mention rule 56, given the foregoing, but it did not. One cannot say at this t...