Appeal 2007-1051
Application 10-161428
PRINCIPLES OF LAW
On appeal, Appellant bears the burden of showing that the Examiner
has not established a legally sufficient basis for the rejection of the claims.
“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Both anticipation under 35 U.S.C. §102 and obviousness under §103
are two-step inquiries, in which the first step is a proper construction of the
claims and the second step requires a comparison of the properly construed
claim to the prior art. Medichem S.A. v. Rolabo S.L., 353 F.3d 928, 933, 69
USPQ2d 1283, 1286 (Fed. Cir. 2003).
To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be filled with
recourse to extrinsic evidence. Such evidence must make clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991)
ANALYSIS
Appellant contends that Examiner erred in rejecting claims 1-10, 13-
22, 24-34, 36 and 37 under 35 U.S.C. 103(a). Reviewing the findings of
facts cited above, and the documents of record, we note that Examiner has
presented a prima facie case for the rejection of all claims. (Answer 3-14).
Against this case the Appellant has presented two major objections
embodied in the following two quotes from the Brief: 1) that “Traversat et
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Last modified: September 9, 2013