Appeal No. 2001-2004 Page 4
Application No. 08/956,715
Claims 1-12 stand rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1-28 of Ragheb in view of
Bosley. It is the examiner’s position that the Ragheb claims include all of the subject
matter of application claims 1-12 except for the requirement that the layer of silver have
a specific surface energy density of about 20 to 30 dynes per centimeter, but that it
would have been obvious to provide the elemental silver surface recited in the Ragheb
claims with this characteristic in view of the teachings of Bosley.
The appellants have not provided arguments in rebuttal to this rejection, but have
stated that they “have agreed to provide a Terminal Disclaimer with respect to the
application upon receipt of a Notice of Allowability” (Brief, page 4). However, the
intention to perform this future act leaves the double patenting rejection of claims 1-12
standing uncontroverted and uncured, and we therefore will sustain it.
(2)
The first of the rejections under 35 U.S.C. § 103(a) is that claims 1-3 are
unpatentable over Bosley.1 The examiner is of the view that Bosley’s statement that it
was known in the art that a surface energy of 20 to 30 dynes per centimeter “has been
1The initial burden of establishing a basis for denying patentability to a claimed invention rests
upon the examiner. See In re Piasecki. 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
question under 35 U.S.C. §103 is not merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time the invention was made. See Merck & Co. v.
Biotech Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989) and
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007