IN RE ZURKO

No. 96-1258.

142 F.3d 1447 (1998)

In re Mary E. ZURKO, Thomas A. Casey, Jr., Morrie Gasser, Judith S. Hall, Clifford E. Kahn, Andrew H. Mason, Paul D. Sawyer, Leslie R. Kendall, and Steven B. Lipner.

United States Court of Appeals, Federal Circuit.

May 4, 1998.


Attorney(s) appearing for the Case

Nancy J. Linck, Solicitor, Arlington, VA, argued for the Commissioner of Patents and Trademarks. With her on the brief were Albin F. Drost, Deputy Solicitor, Karen A. Buchanan and Kenneth R. Corsello, Associate Solicitors.

Ernest Gellhorn, Washington, DC, argued for Mary E. Zurko, et al. With him on the brief was A. Sidney Johnston, Attorney, Corporate Law Department, Digital Equipment Corporation, Maynard, MA. Of counsel on the brief was Ronald C. Hudgens. Also of counsel on the brief were Janice M. Mueller, Assistant Law Professor, Suffolk University Law School, Boston, MA, John F. Sweeney, Israel Blum, Steven F. Meyer, and Michael O. Cummings, Morgan, & Finnegan, L.L.P., New York City.

Barry E. Bretschneider, Morrison & Foerster, LLP, Washington, DC, for amicus curiae Houston Intellectual Property Law Association.

Thomas G. Field, Jr., Professor of Law, Franklin Pierce Law Center, Concord, NH, for amicus curiae Thomas G. Field, Jr.

Scott F. Partridge, Baker & Botts, L.L.P., Houston, TX, for amicus curiae Biotechnology Industry Organization. With him on the brief was Roger L. Tate, Washington, DC.

Albert Robin, New York City, for amicus curiae International Trademark Association. With him on the brief was Leon J. Bechet.

Richard H. Stern, Ablondi, Foster, Sobin & Davidow, P.C., Washington, DC, for amicus curiae Seagate Technology, Inc. Of counsel on the brief was Edward P. Heller, III, Patent Counsel, Seagate Technology, Inc., Scotts Valley, CA.

Bruce T. Wieder, Chair, Amicus Committee, Patent, Trademark & Copyright Section, Bar Association of the District of Columbia, Washington, DC, for amicus curiae The Patent, Trademark & Copyright Section of the Bar Association of the District of Columbia. With him on the brief was Robert M. Schulman, Burns, Doane, Swecker & Mathis, L.L.P., Alexandria, VA, and Lisa E. Alexander, Morrison & Foerster, L.L.P., San Francisco, CA.

Bruce M. Wexler, Fitzpatrick, Cella, Harper & Scinto, of New York City, for amicus curiae New York Intellectual Property Law Association. With him on the brief was Edward V. Filardi, President, New York Intellectual Law Property Association. Of counsel on the brief was Charles P. Baker, Fitzpatrick, Cella, Harper & Scinto.

Rudolph P. Hofmann, Jr., Schwegman, Lundberg, Woessner, & Kluth, P.A., Minneapolis, MN for amicus curiae Federal Circuit Bar Association. With him on the brief were Ronald L. Smith, President-Elect, and George E. Hutchinson, Executive Director, Federal Circuit Bar Association, of Washington, DC.

Duke W. Yee, President, Dallas-Fort Worth Intellectual Property Law Association, Forth Worth, TX, for amicus curiae Dallas-Fort Worth Intellectual Property Law Association.

Gerald J. Mossinghoff, Oblon, Spivak, McClelland, Maier & Neustadt, Arlington, VA, for amicus curiae Pharmaceutical Research and Manufacturers of America. With him on the brief was Stephen G. Baxter. Of counsel on the brief was Matthew Van Hook, Deputy General Counsel, Pharmaceutical Research and Manufacturers of America, of Washington, DC.

Gary Griswold, President, American Intellectual Property Law Association, Arlington, VA, for amicus curiae American Intellectual Property Law Association. With him on the brief was R. Carl Moy, Faegre & Benson LLP, Minneapolis, MN.

Before MAYER, Chief Judge, RICH and NEWMAN, Circuit Judges, ARCHER, Senior Circuit Judge, MICHEL, PLAGER, LOURIE, CLEVENGER, RADER, SCHALL, BRYSON and GAJARSA, Circuit Judges.


MAYER, Chief Judge.

Mary E. Zurko et al. appealed from a decision of the Board of Patent Appeals and Interferences sustaining the rejection of United States Patent Application No. 07/479,666 under 35 U.S.C. § 103 (1994). Ex parte Zurko, No. 94-3967 (Bd. Pat. Apps. & Int. Aug. 4, 1995). On appeal, this court reversed, holding that the board's decision— that the method claimed for improving security in computer systems was obvious—...

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