Appeal No. 2007-0196 7
Reexamination Control No. 95/000,009
An initiator
We start with the premise that Chen does not expressly or inherently teach
the use of an initiator with Chen's invention. Would an initiator have been obvious
to a person having ordinary skill in the art nevertheless? There is ample reason to
believe it would have been.
As Lord points out in its request, Congoleum's patent discloses that initiators
are "well-known". Indeed, Congoleum's patent broadly suggests that a person
having ordinary skill in the art would know how to pick the initiator to suit the
curing conditions. There is no argument that Congoleum's disclosure is not
credible. The use of initiators in radiation curing cannot be well-known for the
purpose of enabling Congoleum's claims, but not for the purpose of obviousness.
Alternatively, Dr. Quarmby credibly testifies that initiators are routinely part
of preformulated, commercial UV-curable resins. Although this testimony might
not be sufficient to establish inherency, it is more than adequate to make out a
prima facie case that one skilled in the art would have used an initiator with Chen's
composition if for no other reason than to comply with industry norms. Cf.
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181,
1187 (Fed. Cir. 1997) (noting that shifting industry norms and brand extension
account for the claimed difference).
While the examiner was correct in not finding the initiator to be inherent in
Chen, he erred in applying an inherency analysis to the obviousness rejection as
well. There is enough in Chen alone, when viewed in light of either Congoleum's
representations about the art in its patent disclosure or Dr. Quarmby's testimony, to
make out a prima facie case that use of an initiator would have been obvious.
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