Appeal No. 2007-0196 3
Reexamination Control No. 95/000,009
It is also improper for a requester to expect the Board to make out a facially
adequate case on behalf of the requester for the first time on appeal. In this case,
because we perceive no prejudice to Congoleum, the examiner, or the Board, we
exercise our discretion to analyze the proposed rejection under § 102(e), which
appears to be the most applicable basis for the rejection. On different facts, the
requester's imprecision in proposing the rejection might have resulted in a simple
affirmance instead.
Consideration of two limitations is sufficient to illustrate the substantive
problems with the anticipation rejections.
Sixty micron-sized nylon 12 particles
Claim 1 requires 60 micron-sized nylon 12 particles. Lord points to Chen
at 4:6-28,2 which teaches wear-resistant particles, including hard plastics, and a
most-preferred size range of 30-200 microns. While the claim limitation falls
within Chen's teaching, both in terms of size and material, Chen does not expressly
teach the limitation. We have no evidence that the limitation is inherent in Chen.
If anything, the opposite is true since Chen (at 4:6-8) expressly prefers aluminum
oxide particles. At the oral argument, Mr. Lobo, Lord's representative and a
registered practitioner, was asked to explain how this limitation was met. He could
not do so yet he also declined the panel's invitation to withdraw the proposed
anticipation rejection for claim 1. Lord's argument for the anticipation of claim 1
is frivolous.
An argument is frivolous when, among other possibilities, a reasonable
patent practitioner would not believe the reference taught the contested limitation.
2 Column:line(s).
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