Appeal 2006-2667
Application 10/257,952
Conclusion of Law for the § 112 Issue
The Examiner has not presented evidence or reasons why persons
skilled in the art would not recognize in the disclosure a description of the
invention defined by claim 11, and the aforementioned Specification
disclosures evince that such persons would recognize a description of the
claim 11 invention. Therefore, we cannot sustain the Examiner's § 112, first
paragraph, rejection of claim 11.
The § 103 Issue
Has the Examiner established a prima facie case of obviousness by
pointing to disclosure in Mackintosh which teaches or would have suggested
increasing a proportion of magnesium and/or magnesium compounds at the
expense of the proportion of the other hardening constituents as required by
each of the appealed claims?
Principal of Law for the § 103 Issue
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Analysis of the § 103 Issue
As previously indicated, the Examiner has acknowledged that "[t]he
claims differ from Mackintosh … by reciting that a proportion of the
magnesium compounds is increased at the expense of the other hardening
constituents" (Answer 3) but states that "the bed utilized in Mackintosh …
can include magnesium carbonate or dolomite, which would appear to
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