Ex Parte Scherb et al - Page 5
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Appeal Number: 2006-2066
Application Number: 10/743,461
of ordinary skill in the art to the recited combination of
elements “without any need for picking, choosing, and combining
various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586,
587, 172 USPQ 524, 526 (CCPA 1972). Because the examiner’s
rationale requires such picking and choosing, the examiner has
not carried the burden of establishing a prima facie case of
anticipation of the claimed invention by Edwards.
Nor has the examiner explained why the combination of shoe
press, Yankee cylinder, press nip length and maximum pressing
pressure would have been fairly suggested to one of ordinary
skill in the art by Edwards. Thus, with respect to the
dependent claims rejected over Edwards in combination with other
references, the examiner has not established a prima facie case
We therefore reverse the examiner’s rejections under
35 U.S.C. §§ 102(e) and 103.
New ground of rejection
Under the provisions of 37 CFR § 41.50(b) we enter the
following new rejection.
Claim 1 is rejected under 35 U.S.C. § 103 as being
unpatentable over Edwards.
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Last modified: November 3, 2007