Appeal 2007-0128
Reexamination Control 90/006,208
Patent 5,573,648
On appeal, Applicants bear the burden of showing that the Examiner has not
established a legally sufficient basis for combining the teachings of the prior art.
Applicant may sustain their burden by showing that where the Examiner relies on a
combination of disclosures, the Examiner failed to provide sufficient evidence to
show that one having ordinary skill in the art would have done what Applicant did.
United States v. Adams, 383 U.S. 39 (1966); In re Kahn, 441 F.3d 977, 987-988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
Atwood argues that the claims on appeal do not stand or fall together. We
begin our analysis by reviewing the Examiner=s rejection of Atwood claim 1 as it
is best represents the claims on appeal.
Claim 1
The Examiner states that Dempsey teaches all limitations recited in Atwood
claim 1, except that Dempsey fails to teach the use of Atwood=s claimed mixed
ionic-electronic conductive electrodes. (Examiner=s Answer, p. 4).2 The
2 Note the Examiner finds that Atwood’s claimed electrode diameter range of
approximately 1 to 15 mm encompasses Dempsey’s 16 mm diameter electrodes.
(Answer, p. 4).
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