Wednesday, May 15, 2013

Appellant prevails against anticipation, obviousness rejections in Ex parte Beland

from within Ex parte Beland

As to anticipation:

The Examiner has not provided a basis in
fact and/or technical reasoning to reasonably support the determination that
Kato’s garment in the embodiment shown in Figure 18 necessarily
constitutes a “shirt,” as called for by independent claim 1. See Ex parte
Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).

As to a prima facie case of obviousness

Thus, the Examiner has not made the
initial factual findings required to demonstrate a prima facie case of
obviousness of claims 17-20 and 22-24. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis).

Bottom line:

The decision of the Examiner to reject claims 1-3, 12, 17-20, and 22-
24 is reversed

Case handled by Smart & Biggar, Montreal, Canada.


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