Appeal 2006-2898
Application 10/461,687
person of ordinary skill in the art in possession thereof. In re Spada, 911
F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
ANALYSIS
The Examiner has not carried the burden of making out a prima facie
case of anticipation in the first instance is established by pointing out where
each and every element of the claimed invention is described identically in
the Smith reference, either expressly or under the principles of inherency.
See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990). We agree with Appellants’ description of the Smith reference
appearing on page 5 of the Brief. Specifically, Smith Figure 4 describes
three relevant chemical containing cleaning events (1, 5, and 6). Each
cleaning event is an isolated event performed as part of the test to verify the
effectiveness of the biocidal solutions (col. 18, ll. 30-40). Consequently, we
agree with Appellants that even if cleanings (1) and (6) as specified in
Figure 4 were the same as step (a) of the present invention, there is no
disclosure of the subsequent step of performing one or more cleaning events
as required by the claimed invention (Br. 5). This is especially true since the
Examiner’s discussion of optimization of the cleaning frequency depending
upon the quality and quantity of water to be treated is an admission that the
Smith reference does not describe each and every claim limitation.
As to the Examiner’s rejection of claims 12-16, 36, 41, and 42 under
35 U.S.C. § 103, we note that the Examiner has not provided an analysis of
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013