Appeal No. 2006-2004
Application 10/022,823
which would further establish such a case with respect to the claimed invention encompassed by
claim 24. Accordingly, we reverse the grounds of rejection based on 35 U.S.C. § 103(a). See
generally, Rouffet, 149 F.3d at 1358, 47 USPQ2d at 1458 (“hindsight” is inferred when the
specific understanding or principal within the knowledge of one of ordinary skill in the art
leading to the modification of the prior art in order to arrive at appellant’s claimed invention has
not been explained); Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531 (“The consistent criterion
for determination of obviousness is whether the prior art would have suggested to one of
ordinary skill in the art that [the claimed process] should be carried out and would have a
reasonable likelihood of success viewed in light of the prior art. [Citations omitted] Both the
suggestion and the expectation of success must be founded in the prior art, not in the applicant’s
disclosure.”).
The examiner’s decision is reversed.
Remand
We remand the application to the examiner for consideration of issues raised by the
record. 37 CFR § 41.50(a)(1) (2005); Manual of Patent Examining Procedure (MPEP) § 1211
(8th ed., Rev. 3, August 2005).
It is clear that application 10/023,489, containing claims 1 through 45, matured into
United States Patent US 6,824,650 B2 issued on November 20, 2004, to Lindsay et al. (Lindsay)
containing patent claims 1 through 26. The issue date is prior to the filing of the brief on March
3, 2005, the mailing of the answer on April 29, 2005, and the filing of the reply brief on June 29,
2005, and the mailing of the communication entering the reply brief on September 12, 2005.
Accordingly, the examiner is required to take appropriate action consistent with current
examining practice and procedure to consider whether a new ground or grounds of rejection of
one or more of the pending claims in this application under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over any of patent claims 1 through 26
of Lindsay should be entered on the record.
We hereby remand this application to the examiner, via the Office of a Director of the
Technology Center, for appropriate action in view of the above comments.
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