Wednesday, April 03, 2013

Mixed result in Ex parte Roberts

from Ex parte Roberts handled by Fish & Richardson:

Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). We agree with Appellants that the Examiner’s
rejection does not articulate a reason why a person of ordinary skill in the art
would have modified Endo by using injection molded bristles. See App. Br.


If the product in a productby-
process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior art product was made by a
different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Once
the USPTO has made out a prima facie case that the applicant's claimed
product and the product of the prior art reasonably appear to be the same, the
burden shifts to the applicant to prove otherwise. Id. The burden of proof
on the USPTO in making out a case of prima facie obviousness for productby-
process claims is less than when a product is claimed in the more
conventional fashion. In re Fessman, 489 F.2d 742, 744 (CCPA 1974).
However, in rejecting claim 52, the Examiner does not explicitly articulate a
finding that Endo’s engineering elastomer filaments produced by melt
spinning and drawing into fibers reasonably appear to be the same as
injection molded elements. The mere fact that Appellants’ Specification
describes both extrusion and injection molding as suitable for processing the
elastomeric elements of their invention is not sufficient to establish that
Endo’s melt spun or spun and drawn filaments are the same as injection
molded elements.

No articulated reason means no prima facie case:

The Examiner adds that “[o]ne would deem it obvious to form the
elastomer elements of [Endo] by (injection) molding even if it results in a
material with some different properties from the melt spun method of
[Endo].” Ans. 7. Once again, the Examiner does not articulate a reason why
a person of ordinary skill in the art would have been prompted to do so.
For the above reasons, the Examiner falls short in establishing a prima
facie case of obviousness of the subject matter of claim 52 and its dependent
claims 53, 54, and 57. We do not sustain the Examiner’s rejection of these
claims as unpatentable over Endo.


Specifically, the Examiner finds that Endo teaches an engineering elastomer
for use in forming an oral massage element comprising bristles, and reasons
that it would have been obvious to utilize such known material recognized in
the art as suitable for the intended use. Ans. 6 (citing In re Leshin, 277 F.2d
197, 199 (CCPA 1960)).

Of unexpected results:

Nevertheless, in any
event, the Masterman Declaration fails to show the claimed invention
produces unexpected results for the reasons set forth in our decision in the
first appeal in the present application. Ex parte Roberts, No. 2010-001801,
at 6-7 (BPAI Dec. 17, 2010),
system=BPAI&flNm=fd2010001801-12-15-2010-1. In particular, the
Masterman Declaration avers that it was surprising to Declarant that
“molded elastomeric elements exhibited better wear resistance than the
elastomeric elements that were formed by extrusion” (para. 3) (emphasis
added), but does not specify what type of molding process produced such
allegedly surprisingly superior results.3 Additionally, the Declaration
assesses the better wear resistance results of molded elastomeric elements to
be surprising based on general knowledge in the art regarding conventional
Nylon bristles, rather than elastomeric bristles. Para. 3. As such, the
pertinence of that observation to the prior art and the claimed invention,
which are directed to elastomeric bristles, is not clear. Moreover, the
averments of unexpected or superior results in the Masterman Declaration
are conclusory only, and are not supported by any objective test evidence.
See In re DeBlauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (an applicant
relying on comparative tests to rebut a prima facie case of obviousness must
compare his claimed invention to the closest prior art; where appellant failed
to present any experimental data, appellant’s assertions of unexpected results
constituted mere argument, which cannot establish patentability).


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