Appeal 2007-0518
Application 90/006,969
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” 35 USC § 103(a).
In determining whether claimed subject matter would have been
obvious we take into consideration (1) the scope and content of the prior art,
(2) any differences between the claimed invention and the prior art, (3) the
level of skill in the art, and (4) any relevant objective evidence of
obviousness or non-obviousness. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1731, 82 USPQ2d 1385, 1389 (2007), Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
E. Analysis
The 112, ¶¶ 1 and 2 rejections
Simplification argues that the Examiner failed to follow the
requirements for reexamination proceedings and that the rejections of claims
31-40 under 35 U.S.C. 112, ¶¶ 1 and 2 were improper (FF 13). The
Examiner argued that the amendatory language changed the scope of the
claims 31-40 and therefore the rejection is proper (FF 14). We need not
decide who is correct, since even considering the Examiner’s rejections we
cannot sustain the rejections made.
We first address the arguments made in the context of the written
description requirement. The Examiner initially bears the burden to
demonstrate that the Specification fails to provide written description
support for the claimed invention. Inherent in that demonstration is that the
Examiner clearly articulates a reason for making the rejection. In re
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