Obviousness reversed in Ex parte Diamond
Within Ex parte Diamond , KSR is cited to sustain a REVERSAL of an obviousness rejection:
We agree with Appellants that the Examiner has failed to set forth a prima facie case of obviousness. As the Supreme Court pointed out in KSR Int' l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” Rather, the Court stated:
[I]t can be important to identify 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 . . . because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.
Id. at 418-419 (emphasis added); see also id. at 418 (requiring a determination of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue”) (emphasis added).
Following a restriction, the scope of the appeal is limited to the elected species:
When the Examiner has required the Applicant to elect a chemical species for examination, the issue on appeal is the patentability of the elected species. We thus limit discussion to that single issue and take no position respecting the patentability of the broader generic claims, including the remaining, non-elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).
Within the concurring opinion:
As to obviousness under 35 USC 103:
I concur with the majority Decision to reverse the obviousness rejection, but on a different basis. I am persuaded by Appellants’ arguments and do not find that the Examiner has set forth a prima facie case of obviousness on the cited evidence.
A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
I therefore agree with Appellants that Kan-Mitchell teaches away
from the cited combination of references and that a person of ordinary skill, upon reading the Kan-Mitchell reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.
Obviousness-type double patenting
Claims 1-3, 6-10, 13-17, 19-42 and 44-45 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 2, 5, 7, 15-19, 26, 27, 30, 33-34, 43, 45 and 85- 86 of copending Application No. 10/871,707 (PGPUB 20050079152).
“Appellants submit that they have acknowledged the provisional double-patenting rejection, the Examiner has noted this acknowledgement, and that Appellants are not required to address the merits of the provisional double-patenting rejections until such time as the copending application issues and the rejection [is] made non-provisional.” (App. Br. 16.) Appellants cite no specific authority for not reaching the merits of the obviousness-type double patenting rejection.
However, MPEP 804(B)(1) states:
If “provisional” ODP rejections in two applications are the only rejections remaining in those applications, the examiner should withdraw the ODP rejection in the earlier filed application thereby permitting that application to issue without need of a terminal disclaimer. A terminal disclaimer must be required in the later-filed application before the ODP rejection can be withdrawn and the application permitted to issue. If both applications are filed on the same day, the examiner should determine which application claims the base invention and which application claims the improvement (added limitations). The ODP rejection in the base application can be withdrawn without a terminal disclaimer, while the ODP rejection in the improvement application cannot be withdrawn without a terminal disclaimer.
Thus, Appellants‟ argument that they are not required to address the merits of the provisional double-patenting rejections until such time as the copending application issues and the rejection is made non-provisional, is not applicable in the present case.
Copending Application No. 10/871,707 was originally filed on June 17, 2004, and is the earlier filed application. The present application was filed on December 29, 2005 claiming priority to a provisional application filed December 29, 2004. Thus, the pending application is not the earlier application and the examiner cannot withdraw the ODP rejection in the present application to permit it to issue without need of a terminal disclaimer.
Moreover, recent activity in the copending application includes the filing of an RCE application on Sept. 26, 2011, and a Rule 1.132 Affidavit on the same date. Therefore, the provisional obviousness-type double patenting rejections are not the only remaining rejections in each application, and the present application is the later filed application, so Appellants are required to filed a terminal disclaimer in the present application or address the merits of the obviousness-type double patenting rejection. MPEP 804(B)(1). As Appellants have failed to address the merits of the obviousness-type double patenting rejection and there is no terminal disclaimer of record in the application, the rejection is summarily affirmed.
Even though the obviousness rejection is reversed, all claims remain subject to the affirmed obviousness-type double patenting rejection, and therefore, the rejection of the claims is affirmed.