Appeal 2006-2352
Application 10/065,436
the Examiner has not provided persuasive rationale, on this record, as to why
one of ordinary skill in the art would have been led to manufacture the
empty core fibers of Hirakawa with an axial opening extending entirely
therethrough (claim 72).
Thus, on this record, an adequate factual basis for shifting the burden
to Appellants on the patentability issues raised here has not been supplied,
prima facie, by the Examiner.
CONCLUSIONS OF LAW
We conclude that the Examiner erred by failing to show that
Hirakawa describes or suggests all the limitations of either claim 2 or claim
72 on this record. Thus, we determine that Appellants have identified
reversible error in the Examiner’s anticipation and obviousness rejections in
their Brief.
II. § 103 REJECTION OVER TAMIYA in view of JENNERGREN
Claims 16, 28, 29, 30, and 37 are the only independent claims subject
to the Examiner’s obviousness rejection over Tamiya in view of Jennergren.
The Examiner contends that the claimed “absorption capability range
is inherent to the fibers of Tamiya in view of Jennergren” (Answer 14) and
maintains that the combined teachings of the applied references would have
rendered obvious, within the meaning of § 103, the subject matter of claims
16-38 based on inferences from asserted commonalities.
Appellants contend that the Examiner has not reasonably shown that
the applied references would have led one of ordinary skill in the art to a
product with the absorptive capacity limitations as required in any of the
15
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: September 9, 2013