Ex Parte CARCASONA et al - Page 11




              Appeal No. 2001-1947                                                                                        
              Application 08/333,202                                                                                      
                     After evidence or argument is submitted by the applicant in response to an                           
              obviousness rejection, "patentability is determined on the totality of the record, by a                     
              preponderance of evidence with due consideration to persuasiveness of argument."    In                      
              re Oetiker,  977 F.2d 1443, 1445,  24 USPQ2d 1443, 1444 (Fed. Cir. 1992);  see In re                        
              Piasecki,  745 F.2d 1468, 1471-72,  223 USPQ 785, 787 (Fed. Cir. 1984) ("All evidence                       
              on the question of obviousness must be  considered, both that supporting and that                           
              rebutting the prima facie case.").   On balance, we believe that the totality of the                        
              evidence presented by the examiner and appellants weighs in favor of finding the                            
              claimed invention nonobvious in view of the cited references.  The rejection of the                         
              claims for anticipation, or in the alternative for obviousness of the claimed invention, is                 
              reversed.                                                                                                   


              Other Issue                                                                                                 
                     Upon return of the application to the examiner, it is recommended that the                           
              examiner review Serial No. 08/337,671 (Appeal No. 2001-1259) to determine if any                            
              double patenting issues exist, in particular between claim 22 of the pending application                    
              and claim 20 of Serial No. 08/337,671.                                                                      








                                                           11                                                             





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007