Page 5
OPINION
We have carefully considered all of the arguments advanced by appellants and
the examiner and agree with the appellants that the aforementioned rejections under
35 U.S.C. §102(a) or (b), and 35 U.S.C. § 103 are not well founded. Accordingly,
we do not sustain these rejections.
The Rejection under 35 U.S.C. §§ 102 and 103-Claims 43 and 4
“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability,” whether on the
grounds of anticipation or obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). On the record before us, the examiner
relies upon six references to reject the claimed subject matter and establish a prima
facie case of anticipation, or in the alternative, obviousness.
However, a careful review of each of the references with respect to the first
embodiment reveals that there is no explicit disclosure of “applying the coating fluid
to the surfaces wherein the temperature of the surfaces has been previously
o
elevated to 40 C or over.” See claim 43. The examiner however submits two
separate arguments. It is the examiner’s position that, “due to heated environs
normally present with reactor, the surface(s) of the reactor (surface) would have
o
been ‘previously elevated to 40 C.’” See Answer, page 7.
During patent prosecution, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the claim language is to be read in
view of the specification as it would be interpreted by one of ordinary skill in the art.
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007