Appeal 2007-1118
Application 10/237,089
The Examiner rejects claims 1-14 and 16-20 under 35 U.S.C. § 103(a)
as unpatentable over Sakashita in view of Umeno.
II. DISCUSSION
A. Issue
To determine the issues on appeal, we have reviewed the contentions
of the Appellants and the Examiner as presented in the Brief filed June 22,
2006, the Answer filed September 8, 2005, the Reply Brief filed November
4, 2005, the Supplemental Answer filed August 4, 2006, and the
Supplemental Reply Brief filed October 4, 2006.
Appellants’ main contention as presented in their Briefs is that there is
no suggestion in the prior art for combining the SiOx particles of Sakashita
with the chemical vapor deposited carbon coating of Umeno and that their
showing of unexpected results provides sufficient evidence of
nonobviousness. The Examiner finds that the suggestion to combine arises
from the teachings of Umeno. The main issue arising from the contentions
of Appellants and the Examiner is: Have Appellants overcome the rejection
by showing insufficient evidence of prima facie obviousness or by rebutting
the prima facie case with sufficient evidence of unexpected results? See In
re Kahn, 441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006)
(“On appeal to the Board, an applicant can overcome a rejection by showing
insufficient evidence of prima facie obviousness or by rebutting the prima
facie case with evidence of secondary indicia of nonobviousness.” (emphasis
omitted)).
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