Appeal No. 2003-2032
Application 09/116,371
lands.” Thus, contrary to the examiner’s position “that calender rolls are not claimed” (answer,
page 4), the calender roll is certainly an integral part of the claimed method as encompassed by
appealed independent claims 1 and 26, and the limitations with respect thereto must be given
effect in applying prior art to the appealed claims, as appellants argue (see brief and reply brief in
entirety).
Upon comparing the claimed method as encompassed by appealed claim 1 with the
combined teachings of Harrington and Smith, it seems to us that the disclosure of FIG. 7, page
51, lines 1-13, and the Examples of Harrington constitute the closest prior art of that applied by
the examiner, differing from the claimed method in the calendar roll shown in Harrington
FIG. 7, as appellants contend. Thus, on this record, it is this difference in claimed and prior art
calender rolls which must be the focus of the inquiry under § 103(a). Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 460 (1966).
To the extent that it can be said that the examiner sufficiently considered this difference
to the point of establishing a prima facie case of obviousness, appellants have brought forth
argument, including objective evidence, in rebuttal (see, inter alia, brief and reply brief in
entirety). Thus, the burden has been shifted back to the examiner to consider anew the record as
a whole with respect to the issue of obviousness, and based on that review, again set forth a
prima facie case of obviousness with respect to the claimed invention as a whole in order to
maintain the ground of rejection. See, e.g., Oetiker, supra.
It is apparent from the examiner’s position stated at pages 4-6 of the answer, that the
examiner has not reestablished a prima facie case based on the claimed invention as a whole in
light of the record as a whole, and accordingly, on this record, we reverse the ground of rejection.
The examiner’s decision is reversed.
Reversed
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