Appeal 2007-1678
Application 09/800,547
II. DISCUSSION
A. Issue
In reviewing the rejections, we consider the dispositive issues arising
from the contentions in the Brief filed September 19, 2006 and the Answer
filed November 03, 2006.
With respect to the rejection over Trainor in view of Ross, Appellants
contend that Trainor does not teach various limitations of the claims and
Ross does not cure the deficiencies of Trainor (Br. 8-11). With respect to
the rejection over Akashe in view of Ross, Appellants argue that the
combination does not teach what is claimed and there is no motivation to
make the combination (Br. 12-14).
For each rejection, the dispositive issue in this appeal is: Have
Appellants overcome the rejection by either (1) showing that there is
insufficient evidence of prima facie obviousness to support the rejection or
(2) by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness such as a showing 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)).
At the outset we note that in the previous Decision of September 30,
2004, we affirmed the decision of the Examiner rejecting claims 1-27 under
35 U.S.C. § 103(a) as unpatentable over Trainor in view of Ross, the same
rejection is now maintained by the Examiner against amended claims 1, 3, 5,
4
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