Appeal No. 2002-1908
Application 09/097,013
inventors named in the Takahashi ‘676 patent. Presumably, these
inventors are, as assumed by the examiner, the first to invent
the subject matter claimed in the Takahashi ‘676 patent. As
pointed out above, however, this claimed subject matter differs
from that recited in appealed claims 1 through 3, 5 through 7 and
9 through 11. Moreover, that the appealed claims might be
readable on the disclosure of the Takahashi ‘676 patent is of no
moment, and is not surprising given the background discussion in
the patent. In short, the Takahashi ‘676 patent simply does not
provide the evidentiary basis necessary to establish a prima
facie case of derivation.2
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 102(f) rejection of claims 1 through 3, 5 through 7 and 9
through 11 as being unpatentable over Takahashi ‘676.
II. The 35 U.S.C. § 103(a) rejections of claims 4 and 8
Inasmuch as neither Gualtiere nor Hansen cures the above
noted deficiency in the examiner’s application of Takahashi ‘676
to reject parent claim 1, we shall not sustain the standing 35
U.S.C. § 103(a) rejection of dependent claim 4 as being
2 This being so, it is unnecessary to delve into the merits
of the appellants’ 37 CFR § 1.132 declaration filed May 24, 2002
(Paper No. 27) to rebut the derivation rejection.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007