Interference No. 104,693
Preputnick v. Provencher
Preputnick might have meant U.S. Patent No. 4,729,744 (Exhibit
2017), but we are not reasonably certain. U.S. Patent No.
4,846,727 is also listed as evidence relied upon by Preputnik.
Both patent numbers substantially overlap '4,729,727."
Furthermore, Preputnick mis-identified U.S. Patent No.
4,729,744 as being issued to Glover et al. when none of the named
inventors in that patent is named Glover. U.S. Patent No.
4,846,727 (Exhibit 2016) is issued to Glover et al., but
Preputnick mis-identified that exhibit as Patent No. 4,846,747 in
the section of the motion entitled 'Evidence Relied Upon" and
also mis-identified it as a patent to Bet et al., the inventors
of U.S. Patent No. 4,729,744. The situation is confusing.
Central to the conclusion of obviousness is a finding of
differences between the claimed invention and the prior art
reference on which the obviousness conclusion is based. See,
Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 46V
(1966). The question to be answered is whether despite such
differences, the claimed invention as a whole still would have
been obvious to one with ordinary skill in the art. The
established differences serve as the focus of the obviousness
analysis. If, in ex parte prosecution, an examiner rejects an
applicant's claim for obviousness without first establishing and
focusing on differences between the claimed invention and the
- 25 -
Page: Previous 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 Next
Last modified: November 3, 2007