Interference No. 103,995 Paper 29
Morel v. Sekhar Page 29
patent (the ‘037 application file, Paper 7, p. 2, ¶ 3) shows that the Examiner viewed “the
comparative data [as] showing the superiority of zirconium diboride over titanium diboride”
and urges the patentability of claims 2 and 5 for the same reason (Paper 20, pp. 10-11).
As discussed above, ex parte decisions of a primary examiner are not binding in inter
partes proceedings. Moreover, as pointed out by Sekhar in its reply (Paper 25, pp. 5-6),
while the Examiner characterizes Sekhar ‘476 (SDEx 2) as suggesting a “large group of
refractory materials including ZrB " (fact 28 above), Sekhar ‘476 actually describes a
2
group of only six diborides or combination thereof as being “preferred” (fact 55 above, p.
25). Finally, as discussed at page 9 above, there is no indication that the Examiner ever
found it necessary to consider any criticality of the 1:1 to 9:1 weight ratio range of Morel
claims 2 and 5.
Thus, for the above reasons, Morel has failed to rebut the prima facie case of
obviousness over Sekhar ‘476.
D. Are Morel claims 2 and 5 unpatentable for obvious over Sekhar ‘513
in view of Sekhar ‘476
Sekhar has established a prima facie case of obviousness over each of Sekhar
‘513 and Sekhar ‘476 individually as to Morel claims 2 and 5 which Morel has failed to
rebut by a showing of unexpected results. Therefore, for the reasons set forth on pp. 16-28
above, Morel claims 2 and 5 are unpatentable under 35 U.S.C. § 103 as being obvious
over the combination of Sekhar ‘513 and Sekhar ‘476.
Therefore, Sekhar preliminary motion 1 is granted.
A. Morel claims 1, 3-5 and 9 are unpatentable under 35 U.S.C. § 102 as
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