Appeal No. 2002-0866
Application No. 09/262,471
prior art embodiments closest to the claimed subject matter.
Therefore, upon return of this application, the examiner is to
determine:
1) Whether Delft alone, or in combination with Heuvel, would
have render the subject matter defined by the remaining claims
prima facie obvious to one of ordinary skill in the art; and
2) whether any prima facie case of obviousness established
by Delft alone and/or in combination with Heuvel is rebutted by
the showing of unexpected results relied upon by the appellants
in the form of a Rule 132 declaration executed by Dr. Zulin Shi.
In assessing the sufficiency of the showing, the examiner is
to determine:
1) Whether the appellants have demonstrated that the showing
is directed either directly or indirectly to a comparison between
the claimed invention and the closest prior art embodiments in
Delft2;
2) Whether the appellants have demonstrated that the showing
is reasonably commensurate in scope with the claims on appeal3;
2 In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed.
Cir. 1984).
3 In re Kulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir.
1990)(“‘[O]bjective evidence of nonobviousness must be commensurate in scope
with the claims.’”); In re Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007