Appeal No. 2006-0415
Application No. 10/267,200
1 finding, an applicant must specifically point out the supposed
2 errors in the examiner’s action, which would include stating why
3 the noticed fact is not considered to be common knowledge or well-
4 known in the art.”)3
5 Furthermore, the examiner made a finding that the
6 specifically recited curatives and resins were well-known for
7 these same functions. (Office Action October 31, 2003). Not once
8 since then has the appellant substantively denied that position or
9 pointed to any persuasive evidence that these curatives and resins
10 were not known equivalents. Accordingly, in the absence of an
11 express traversal contradicting the examiner’s holding we accept
12 as an operative fact that the recited resins and curatives are
13 well known in the art.
14 As stated in In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536
15 (CCPA 1982) “Express suggestion to substitute one equivalent for
16 another need not be present to render such substitution obvious.”
17 It appears that the appellant is simply claiming several well-
18 known alternative curatives and resins.
19 Accordingly, we shall affirm the rejection of these claims as
20 well.
3 The necessity of expressly asserting that the examiner’s finding that a
claimed feature is well known is incorrect also flows from the duty of
disclosure requirements of 37 CFR § 1.56. To merely assert that an alleged well
known feature has not been shown in the cited prior art, with actual knowledge
that the examiner’s statement is in fact correct, withholds material information
17
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