Appeal 2007-0103
Application 10/603,023
polybutadiene teachings of Huynh-Tran into Corvasce et al., the motivation
set forth for the rejection of claims 1-12 and 16 is proper" (page 7 of
Answer, first paragraph). Manifestly, the absence of a negative teaching in
the prior art is not the standard for determining obviousness within
35 U.S.C. § 103. Also, it is fundamental that when an applicant submits
evidence of unexpected results, the evidence must be analyzed and weighed
by the Examiner in determining the obviousness of the claimed invention.
Accordingly, this application is remanded to the Examiner to
complete the examination that appellants and the public are entitled to. The
Examiner is directed to address Appellants' substantive arguments appearing
at pages 4-6 of the brief, and evaluate the weight of the Specification data in
light of the arguments set forth at pages 6-8 of the Brief. The Examiner
must determine whether the Specification data is commensurate in scope
with the degree of protection sought by the appealed claims,1 whether the
Specification data presents a fair comparison with the closest prior art,2 and
whether the specification data would be considered truly unexpected to one
of ordinary skill in the art.3
1 In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769, 778 (Fed. Cir. 1983).
2 In re Johnson, 747 F.2d 1456, 1461, 223 USPQ 1260, 1263-64 (Fed. Cir.
1984).
3 In re Merck & Co., 800 Fl.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir.
1986); In re Klosak, 454 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972).
4
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007