Appeal 2006-2814
Application 10/331,582
Examiner, Marks’ preference for omitting cavitating agents in the core does
not “constitute a teaching away from a broader disclosure or nonpreferred
embodiments.” Answer 10.
The Examiner bears the initial burden of establishing a prima facie
case of obviousness. In re Kumar, 418 F.3d 1361, 1366, 76 USPQ2d 1048,
1050 (Fed. Cir. 2005). To meet this burden, the Examiner must provide a
detailed analysis of the prior art and reasons why one of ordinary skill in the
art would have possessed the knowledge and motivation to make the claimed
invention. See In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.
Cir. 2006). In a patentability determination, all evidence of nonobviousness,
including data in the Specification, must be considered when assessing
patentability. See In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687
(Fed. Cir. 1995)(citing In re Margolis, 785 F.2d 1029, 1031, 228 USPQ 940,
941-42 (Fed. Cir. 1986)). In our view, the Examiner has not met this burden
of proof because he has not provided the requisite evidentiary support for his
conclusion of obviousness and has not sufficiently addressed Appellant's
evidence of nonobviousness.
For example, the Examiner found that:
Marotta et al. teaches that it is old and well-known in the
analogous art to have a core layer comprising a cavitating agent
wherein the cavitating agent has a median particle size of 1.5
microns or less (see col. 5, lines 55-60) for the purpose of
providing a metallized surface with a bright mirrored
appearance. Answer 4.
While the referenced portion of Marotta teaches that a cavitating agent
may be included in the core layer, the Examiner has not directed us to that
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