Appeal 2007-2774
Application 10/285,632
most pertinent to the instant claims" (FF 42). According to the Examiner,
his examination "does not entail consideration of all possible germaine prior
art" (FF 42). However, it is well settled that when evidence is submitted in
rebuttal of a prima facie case of obviousness, the Examiner must consider
anew all the evidence, including the rebuttal evidence, pertinent to the
question of obviousness under the § 103 criteria. In re Rinehart, 531 F.2d at
1052, 189 USPQ at 147.
Furthermore, the Examiner has not provided a factual basis for his
implicit conclusion that the low % paint by volume disclosed in the
Examples of Mahoney and Mizuno are not meant to simulate actual
operating conditions (FF 43). One of ordinary skill in the art would
reasonably have been expected the artisan to use laboratory testing protocols
that simulate expected actual operating conditions so that an informed
decision as to the usefulness of the proposed method can be evaluated.
Moreover, the rebuttal evidence submitted by Appellant not only spans
approximately twenty years of routine practice in the prior art, but it is
consistent over that time span in its description of the concentration of paint
found in typical used flush solutions being treated.
Finally, the Examiner has not explained why one of ordinary skill in
the art would have reasonably expected that a filtered flush solution obtained
by treating a dirty/used flush solution containing 5 to 20 times as much
surplus paint as typically present in a dirty/used flush solution could be
recycled to the spray application equipment, as recited in claim 1, without
effectively clogging up the equipment.
Based on the foregoing, we reverse the Examiner's rejection of claims
1-3, 5-8, 10-13, 15-16, 38-39, 43 and 45. In re Fritch, 972 F.2d 1260, 1266,
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