Appeal 2007-0691
Application 10/465,423
1 achieved. See KSR, 127 S. Ct. at ___, 82 USPQ2d at 1396; In re Dillon,
2 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990) (en banc); In re Kemps,
3 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996). We agree on
4 this record with the Examiner's observation that the claimed compositions
5 and methods are within the public domain in the § 103 sense and that
6 nothing on this record justifies removing the claimed subject matter from the
7 public domain. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S.
8 141, 146 (1989); Graham v. John Deere Co., 383 U.S. 1, 6 (1966). In this
9 case, the Examiner has properly performed "[t]he primary responsibility [of
10 the Patent Office] for sifting out unpatentable material …" Graham, 383
11 U.S. at 18.
12
13 G. Conclusions of law
14 Ciba has not sustained its burden on appeal of showing that the
15 Examiner erred in rejecting the claims on appeal as being unpatentable under
16 35 U.S.C. § 103(a) over the prior art.
17 On the record before us, Ciba is not entitled to a patent containing the
18 composition and method claims on appeal.
19
20 H. Decision
21 ORDERED that the decision of the Examiner rejecting
22 claims 1, 4-8 and 11-12 over the prior art is affirmed.
23 FURTHER ORDERED that no time period for taking any
24 subsequent action in connection with this appeal may be extended under
25 37 C.F.R. § 1.136(a)(1)(iv) (2006).
26
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