Appeal 2007-1268
Application 10/177,845
the Section 132 Declaration failed to place the application in condition
for allowance. (Answer 7-8.)
12. In the Answer, the Examiner also considered the new evidence
submitted in the Evidence Appendix of the Brief, treating it as a
declaration of prior invention under 37 C.F.R. § 1.131. (Answer 8-
10.) The Examiner found the new evidence ineffective to disqualify
Ohkado as a reference under 35 U.S.C. § 102(a). (Answer 10.)
PRINCIPLES OF LAW
The Board must necessarily weigh all of the evidence and argument in
reviewing the Examiner's decision on appeal. See In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
The Examiner bears the initial burden of showing a prima facie case
of unpatentability. In re Piasecki, 745 F.2d at 1472, 223 USPQ at 788.
When that burden is met, the burden then shifts to the applicant to rebut. Id.;
see also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954 (Fed.
Cir. 2005) (finding rebuttal evidence unpersuasive). If the applicant
produces rebuttal evidence of adequate weight, the prima facie case of
unpatentability is dissipated. In re Piasecki, 745 F.2d at 1472, 223 USPQ at
788. Thereafter, patentability is determined in view of the entire record. Id.
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
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