Appeal No. 2007-0196 6
Reexamination Control No. 95/000,009
photoinitiator would not cure with U-V radiation in a reasonable period, less than a
day." We find this testimony to be very credible so far as it goes. Even if an
initiator was recognized as desirable, we have no basis to infer that the resin Chen
discloses necessarily had an initiator (or was otherwise fine-tuned for commercial
use). The test for an inherent disclosure is fairly stringent. Given this stringency,
we hesitate to fault the examiner for declining to find anticipation.
OBVIOUSNESS
Lord argues that the Chen patent with other prior art would have made
Congoleum's claims obvious under 35 U.S.C. 103(a). We agree.
In general, the examiner has read both the claims and the teachings of the art
too narrowly. During examination, claims are read as broadly as they reasonably
can be read in view of the specification, while the prior art must be considered not
only for what it teaches, but also for all that it would fairly suggest to a person
having ordinary skill in the art. The examiner's narrow reading of the Chen patent,
coupled with the perceived failure of the other prior art to remedy the deficiencies
in Chen, led to reversible error on the question of obviousness.
"New" ground of rejection
All seventeen claims should be rejected as having been obvious as Lord
proposed. Rather than repeat Lord's prima facie case for obviousness, we focus on
a proper application of Chen to the contested limitations.4 Once Chen is properly
applied, Lord's proposed rejection speaks for itself.
4 The ultimate question of obviousness requires simultaneous consideration of all
of the limitations and all of the teachings in the art. As a practical matter, we must
look at the limitations individually and focus on the points actually in dispute.
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