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Keywords

patenttrademark
appellant

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In re Kaslow, 707 F.2d 1366, 217 U.S.P.Q. 1089

Facts

Issue

Were the claims of the application for a 'coded merchandising coupon' obvious in light of prior art, and were they supported by the specification?

Were the claims of the application for a 'coded merchandising coupon' obvious in light of prior art, and were they supported by the specification?

Rule

Analysis

The court analyzed the claims in light of the prior art, particularly focusing on the RCA-Kroger system, which demonstrated similar coupon redemption technology. The court concluded that the differences between the claimed invention and the prior art were not sufficient to render the invention non-obvious. Furthermore, the specification was found lacking in adequately describing the claimed auditing feature, failing to convey that the inventor had possession of the claimed subject matter.

Conclusion

The court affirmed the Board's decision, holding that the claims were obvious and not supported by the specification.

We, therefore, hold appellant's claims are not supported by the specification.

Who won?

The Patent and Trademark Office prevailed in this case as the court upheld the rejection of the claims. The court found that the claims were obvious in light of the prior art and that the specification did not adequately support the claims. The decision reinforced the standards for patentability regarding obviousness and the necessity for a clear written description in patent applications.

The Board affirmed both of the examiner's rejections. The Board, however, treated the section 132 rejection as if it had been made under the first paragraph of section 112.

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