Appeal 2007-2640
Application 09/933,517
The Examiner contends that Meilahn’s aquaculture floating tank,
equipped with a pump assembly for drawing water from different depths,
meets the limitations of claim 8 of a “swimming pool structure floating on a
sea” and “means for collecting and supplying” sea water to the swimming
pool structure that would exclude surface sea water and aquatic animals
(Answer 8-9). The Examiner further contends that it would have been
obvious to one of ordinary skill in the art to have supplied deep sea water1 to
Meilahn’s floating tank in view of Iseki’s and Miyamato’s teachings of the
advantages of deep seawater for aquaculture and Nomura’s teaching of deep
seawater obtained from pumping stations for the treatment of atopic skin
inflammation (Answer 10).
It is the Examiner’s burden to establish prima facie obviousness.
Obviousness requires a teaching or suggestion of all the elements in a claim
(In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000)) and “a reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the claimed new
invention does” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007). Once prima facie obviousness has been
established, the burden shifts to the applicant to rebut the prima facie case
with evidence and/or argument. Hyatt v. Dudas, 492 F.3d 1365, 1369-70, 83
USPQ2d 1373, 1375-76 (Fed. Cir. 2007). Here, we find that the Examiner
has identified all the elements of claims 8 and 44, and provided a logical
reason that would have prompted the skilled worker to have combined them
1 Claim 8 recites that the means is for “supplying deep-sea water.”
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013