Appeal No. 2003-0839 Page 4
Application No. 09/646,339
[peak]-to-valley surface roughness. The expected result would be
an [sic] molded item made from polyurethane and an antibiotic in
order to provide a device with a controlled release of the active
substance over a long duration.
Examiner’s Answer, page 4.
Appellants argue, among other things, that Solomon does not “teach or
fairly suggest modifying the surface of their articles such that they would have a
peak-to-valley roughness of < 5 µm.” Appeal Brief, page 4.
“[T]he examiner bears the initial burden of presenting a prima facie case of
obviousness. Only if that burden is met, does the burden of coming forward with
evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “The test of obviousness vel non is
statutory. It requires that one compare the claim’s ‘subject matter as a whole’
with the prior art ‘to which said subject matter pertains.’” In re Ochiai, 71 F.3d
1565, 1569, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995) (quoting 35 U.S.C. § 103).
“The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior art.” In re
Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994). See also
In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976) (“[W]e
must give effect to all claim limitations.” (emphasis in original)).
In this case, we agree with Appellants that Solomon would not have
suggested the instantly claimed products. Claim 1 is limited to products having
“a peak-to-valley surface roughness of <5 µm.” The examiner has acknowledged
that Solomon does not teach this limitation. Although the examiner argues that
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