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« Audatex North America, Inc. v. Mitchell International, Inc. (Fed. Cir. 2017) | Main | Federal Circuit Orders Rehearing En Banc in Nantkwest v. Matal »

August 30, 2017

Comments

Kevin, is there a link to the decision itself?

If the Board actually found "the specification did not provide a basis for determining what the term "configured" meant .. for both the plumbing and electrical components of the claimed device" why didn't they add or substitute a 112 rejection?

Dan: we will provide it

Paul: likely thought between the indefiniteness and obviousness that was enough.

The claims recited "a spin­-on female pipe connector at an inflow end and a spin-on male pipe connector on an outflow end." There's little else to "configure" as far as the plumbing goes, and the examiner correctly noted that the easy-to-install limitation added no "patentable weight" to the claims. A classic case of trying to claim the results rather than the invention.

What's worse, the prior art showed threaded (i.e. "spin-on") connections. The specification specifically recited "three-quarter inch male [and female] hose bib connector[s]", which as a claim limitation might have been better suited to the arguments being presented: a consumer could easily interpose such a device into an appliance's hose connection. That would have solved the §112 problem, at least.

The perfunctory arguments made against the obviousness rejections had little persuasive force. The closer the prior art, the more closely you have to argue.

"If the Board actually found "the specification did not provide a basis for determining what the term "configured" meant .. for both the plumbing and electrical components of the claimed device" why didn't they add or substitute a 112 rejection?"

Indefiniteness is a 112 rejection...

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