Appeal No. 2003-1911
Application No. 09/228,694
applied references establish a prima facie case of obviousness
for the reasons well detailed in the Answer. On pages 13-14 of
the Brief, the appellants contend that the Pandya declaration of
record rebuts any prima facie case under Section 103 which may
exist and that the examiner has inappropriately disregarded this
declaration. In fact, the examiner has not disregarded this
declaration but instead has determined that it is inadequate to
establish non-obviousness. In particular, it is the examiner’s
determination that the comparative showing set forth in the
declaration fails to establish non-obviousness because it does
not compare the here-claimed subject matter with the closest
prior art and because it is not commensurate in scope with the
claimed subject matter to which it pertains.
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defined by the claim in question without specifically identifying
the examiner’s error in determining that the claim subject matter
is unpatentable. Indeed, as noted on pages 25-26 of the Answer,
the appellants comments regarding claim 17 are not even accurate
with respect to the subject matter defined thereby. Under these
circumstances, it is not immediately apparent that such comments
qualify as arguments pursuant to 37 CFR § 1.192(c)(7) and (8).
Nevertheless, with commendable professionalism and industry, the
examiner has responded to each and every one of these comments by
explaining the basis, including the identification of specific
prior art disclosure, for his own patentability determination
with respect to each of the claims in question.
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