Appeal 2007-0908
Application 10/152,077
Additional Comments
Although we find Ueno to be a potent reference, the Examiner does
not appear to have made efficient use of it, overlooking teachings relevant to
the addition of gaseous IPA, and relying instead on teachings that relate
primarily to processes involving the addition of liquid IPA. Although the
teachings can be related to processes involving the addition of IPA vapor,
significantly more work is required in order to establish the connections.
But all the Examiner has done is point to various teachings and assert that
obviousness follows. Although this approach might be justifiable with
regard to certain very simple inventions where an explanation would be
essentially superfluous with the description, the process claimed by
Christenson involves numerous interlocking conditions and relations
between the conditions of different steps. Detailed explanations are
necessary in cases like this. As the Supreme Court recently cautioned,
"[o]ften it will be necessary for a court to look to interrelated teaching of
multiple patents . . . and the background knowledge possessed by a person
having ordinary skill in the art . . . to facilitate review, this analysis should
be made explicit." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740–41,
82 USPQ2d 1385, 1396 (2007) (emphasis added).
Because the reasons for the prima facie case of obviousness set out in
this decision differ significantly from the rationale advanced by the
Examiner, we enter our AFFIRMANCE-IN-PART as a NEW GROUND of
REJECTION in order to afford Christenson a full and fair opportunity to
respond.
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