Ex Parte Fukuoka et al - Page 3

                Appeal 2007-1118                                                                             
                Application 10/237,089                                                                       

                      The Examiner rejects claims 1-14 and 16-20 under 35 U.S.C. § 103(a)                    
                as unpatentable over Sakashita in view of Umeno.                                             

                                             II. DISCUSSION                                                  
                      A.  Issue                                                                              
                      To determine the issues on appeal, we have reviewed the contentions                    
                of the Appellants and the Examiner as presented in the Brief filed June 22,                  
                2006, the Answer filed September 8, 2005, the Reply Brief filed November                     
                4, 2005, the Supplemental Answer filed August 4, 2006, and the                               
                Supplemental Reply Brief filed October 4, 2006.                                              
                      Appellants’ main contention as presented in their Briefs is that there is              
                no suggestion in the prior art for combining the SiOx particles of Sakashita                 
                with the chemical vapor deposited carbon coating of Umeno and that their                     
                showing of unexpected results provides sufficient evidence of                                
                nonobviousness.  The Examiner finds that the suggestion to combine arises                    
                from the teachings of Umeno.  The main issue arising from the contentions                    
                of Appellants and the Examiner is:  Have Appellants overcome the rejection                   
                by showing insufficient evidence of prima facie obviousness or by rebutting                  
                the prima facie case with sufficient evidence of unexpected results?  See In                 
                re Kahn, 441 F.3d 977, 985-86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006)                         
                (“On appeal to the Board, an applicant can overcome a rejection by showing                   
                insufficient evidence of prima facie obviousness or by rebutting the prima                   
                facie case with evidence of secondary indicia of nonobviousness.” (emphasis                  
                omitted)).                                                                                   



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