Appeal No. 2007-0196 2
Reexamination Control No. 95/000,009
35 U.S.C. 134 from a final decision of the examiner favorable to patentability.
Such an appeal places the requester in the unaccustomed position of having both
the burden of showing error in the examiner's decision and the ultimate burden of
proof on the question of patentability.
We—
AFFIRM the decision not to reject the claims as anticipated;
REVERSE the decision not to reject the claims as obvious; and
REMAND for examination consistent with this opinion.
ANTICIPATION
Lord argues that the following patent anticipated Congoleum's claims under
35 U.S.C. 102:
H.A. Chen, R. Judd, I.B. Rufus, and J.R. Shultz, "Contrasting gloss
surface coverings optionally containing dispersed wear-resistant
particles and methods of making the same", U.S. Patent 6,228,463 B1
(issued 8 May 2001) ("Chen").
Lord is vague about which provision of § 102 applies.1 The examiner
characterizes the rejection as based on § 102(b). See, e.g., Action Closing
Prosecution 4 (mailed 7 April 2003). Since the application that produced
Congoleum's patent was filed before Chen issued, a rejection under § 102(b) is not
possible. In failing to state a precise basis for the rejection, Lord arguably failed
to make out a facially complete case in the first instance. The examiner should not
be placed in the position of having to guess what the requester really meant before
proceeding with the examination.
1 When urging obviousness, on the other hand, Lord specifies that the statutory
basis is 35 U.S.C. 103(a), although in this case the precision is not as important.
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