Interference No. 103,224
The primary examiner determined that Hashimoto claims 1-8 correspond to the count.
This determination gives rise to a rebuttable presumption that claims 1-8 are directed to
the same patentable invention as the count. Cf. 37 CFR § 1.601(j); Case v. CPC
International Inc., 730 F.2d 745, 749, 221 USPQ 196, 199-200 (Fed. Cir. 1984), cer .
denied, 105 S. Ct. 223, 224 USPQ 736. As the proponent of separate patentability,
Hashimoto bears the burden of establishing the nonobviousness of the two-step process with
respect to the one-step process. See 37 CFR § 1.601(n) and Behr v. Talbott, 27 USPQ2d
1401, 1405 (Bd. Pat. App. & Int. 1992).
Accordingly, the fundamental issue for our determination is whether the presentation
provided by Hashimoto in motion 1 established a prima facie case of separate patentability
sufficient to shift the burden to Skutnik of coming forward with rebuttal evidence. Based
on a thorough review of the entire record before us, it is our opinion that motion 1 was
woefully inadequate in this regard for the following reasons.
As pointed out by the APJ in his Decision on Motions (page 6), it was incumbent upon
Hashimoto as the moving party "to demonstrate by the presentation of objective evidence or
sound technical reasoning why it would not have been obvious to
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007