Appeal 2006-2453
Application 10/302,391
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-74 (Fed. Cir.
1992).
10) Once the PTO has made an initial determination that specified claims
are not patentable (the prima facie case concept, see In re Oetiker, 977
F.2d 1443, 1448, 24 USPQ2d 1443, 1447 (Fed. Cir. 1992) (Plager, J.
concurring)), the burden of production falls upon the applicant to
establish entitlement to a patent. See In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
11) The Board has broad discretion as to the weight to give to declarations
offered in the course of prosecution. See Velander v. Garner, 348
F.3d 1359, 1371, 68 USPQ2d 1769, 1778 (Fed. Cir. 2003)
12) “Although there is ‘no reason why opinion evidence relating to a fact
issue should not be considered by an examiner,’ In re Alton, 76 F.3d
1168, 1175 n. 10 (Fed.Cir.1996), the Board is entitled to weigh the
declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.” In
re American Academy of Science Tech Center, 367 F.3d 1359, 1368,
70 USPQ2d 1827, 1833 (Fed. Cir. 2004).
ANALYSIS AND CONCLUSIONS
Simonetti
Claims 1-5:
Appellants argue, inter alia, that Simonetti does not disclose applying
a UV curable adhesive across the width of the membrane sheet. Br. 7.
Rather, Simonetti’s application of the adhesive is limited to leak paths, i.e.,
along the edges of the membrane sheet and in isolated existing cracks near
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