Appeal 2007-1775
Application 09/749,106
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. 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 [under § 103] by showing insufficient
evidence of prima facie obviousness or by rebutting the prima facie case
with evidence of secondary indicia of nonobviousness.”) (quoting In re
Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1455 (Fed. Cir. 1998)).
Therefore, we look to Appellants’ Briefs to show error in the proffered
prima facie case.
Initially, we note that Appellants have presented no arguments
directed to the combinability of Bonomi and Pallakoff with each other.
Accordingly, Appellants have waived any such arguments, and the
combinability of the references will not be addressed here. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2005) (“Any arguments or authorities not included in the
brief or a reply brief filed pursuant to Sec. 41.41 will be refused
consideration by the Board, unless good cause is shown.”).
STATEMENT OF LAW
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007). To be nonobvious,
an improvement must be “more than the predictable use of prior art elements
according to their established functions.” Id. at 1740, 82 USPQ2d at 1396.
The proponent of a holding of obviousness is required to show
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013