Wednesday, July 17, 2013

PTAB reverses obviousness finding in Ex parte Nilsson

From the beginning of the PTAB decision in Ex parte Nilsson
The examiner did not fare well in Ex parte Nilsson.

We reverse all of the stated rejections. Our reasoning follows.
Under 35 U.S.C. § 103(a), the Examiner carries the initial burden of establishing a prima facie case of obviousness. In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984). Here, the Examiner’s efforts at meeting this burden fall short.

Within the decision

In addition, the Examiner relies on the notion that “polymers are frequently named based on the monomers from which they are formed” (id.).

Hoisted on one's own petard?

In other words, the Examiner has failed to reasonably establish that the claim 57 topcoat of maleamide lacquer, given its broadest reasonable construction when read in light of the subject Specification as it would be understood by one of ordinary skill in the art, is consonant with the Examiner’s rejection position rather than being in accord with Appellants’ argued position (“the claimed top coat is maleamide” not the multi-component reaction product coating as taught by Hall (App. Br. 5)). In this regard and in tendering the rejection, the Examiner appears to attach an unreasonably broad construction to claim 57 based, in part, on the asserted notion about polymer naming that is applied to Applicants’ claimed maleamide lacquer without supplying any evidence supporting such construction while also coupling that notion to Hall’s coating in an attenuated manner with a forced reading of a possible precursor of a single component of the several components used in forming the coating of Hall.
Thus, we agree with Appellants that the Examiner has not carried the burden to establish that this argued top coat requirement of all of the appealed claims fails to differentiate the claimed laminate from the laminate product that would be expected to result if we otherwise agree with the Examiner’s proposed modifications of Ely based on Vein and Hall.


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