Appeal 2007-2557
Application 10/094,866
Adams, Administrative Patent Judge, concurring.
I join with the majority’s decision to affirm the rejection of claims 1,
3, 4, 6-8, 10, and 13 under the judicially-created doctrine of obviousness-
type double patenting.
I disagree with the majority’s decision to affirm the rejection of
claims 1, 3, 4, 6 and 7 under 35 U.S.C. § 103(a). I agree, however, that
claims 8, 10, and 13 are prima facie obvious in view of the cited prior art.
However, my reasoning differs from that of the Examiner and the majority.
DISCUSSION
The first step in an obviousness analysis is to determine the meaning
and scope of each claim. Amazon.com, Inc. v. Barnes and noble.com, Inc.,
239 F.3d 1343, 1351, 57 USPQ2d 1747, 1752 (Fed. Cir. 2001). “Only when
a claim is properly understood can a determination be made whether the
claim . . . renders obvious the claimed invention.” Amazon, 239 F.3d at
1351, 57 USPQ2d 1752 (Fed. Cir. 2001). Accordingly, I provide an
interpretation of each claim on appeal below.
Further, while the majority is quick to point out that “arguments not
made are waived” (supra n. 2), I note that Appellant has no burden to rebut a
rejection of obviousness until a prima facie case has been established. In re
Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993). “In
rejecting claims under 35 U.S.C. § 103, the [E]xaminer bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant. Id.” Rijckaert, at 1532, 28 USPQ2d at
16
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: September 9, 2013