10211746 (B.P.A.I. Oct. 19, 2007)

Ex Parte Brokaw

Board of Patent Appeals and InterferencesOct 19, 2007

10211746 (B.P.A.I. Oct. 19, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PAUL E. BROKAW ____________ Appeal 2006-2864 Application 10/211,746 Technology Center 1700 ____________ Decided: October 19, 2007 ____________ Before EDWARD C. KIMLIN, CHARLES F. WARREN, and LINDA M. GAUDETTE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests reconsideration of our Decision of March 23, 2007 (“Decision”) wherein we sustained the Examiner's rejections of the appealed claims under 35 U.S.C. § 103(a). We have reviewed our Decision in light of the arguments presented by Appellant in the Request. However, we are not persuaded that our Decision was in error. Appellant argues that the Board erred in concluding that the Examiner established a prima facie showing of obviousness. More specifically, Appeal 2006-2864 Application 10/211,746 Appellant contends that the Board incorrectly found that the Examiner had established a prima facie showing of obviousness based on an official notice of fact that cleaning a surface by rubbing with an eraser is well known and conventional. According to Appellant, the Examiner never took an official notice of a fact, but relied on Jialanella for a teaching that a surface can be cleaned by an eraser. Appellant maintains that the Examiner’s prima facie showing of obviousness was based on the combined teachings of Appellant’s applied prior art (“APA”) and Jialanella. Thus, Appellant contends that it was improper for the Board to conclude that the Examiner had established a prima facie showing of obviousness based on Appellant’s APA and an official notice of fact that a surface can be cleaned by an eraser. In our view, it was readily apparent from the Answer that the Examiner relied on common knowledge to establish that it is conventional in the art to clean a surface by rubbing with an eraser. Nonetheless, even if the Examiner’s rejection was unclear to Appellant at the time of filing the appeal, Appellant was certainly apprised of the basis of the Examiner's rejection from our Decision. Thus, Appellant has been afforded an opportunity to respond to the Examiner’s position in this Request for Rehearing, yet has still not disputed that it was well known and conventional in the art to clean a surface by rubbing with an eraser. See In re Lundberg, 244 F.2d 543, 551, 113 USPQ 530, 537 (CCPA 1957) (examiner's statement accepted as true in light of appellant's failure to question its accuracy or to present contradicting evidence). Absent such arguments or contradictory evidence, we remain of the opinion that the Examiner established a prima facie showing of obviousness as to the appealed claims for the reasons stated in our Decision. 2 Appeal 2006-2864 Application 10/211,746 In conclusion, based on the foregoing, we have granted Appellant’s request to the extent that we have reconsidered our decision, but we deny Appellant’s request to make any change therein. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). DENIED sld/ls WARREN A. SKLAR RENNER, OTTO, BOISSELLE & SKLAR, LLP 19TH FLOOR 1621 EUCLID AVENUE CLEVELAND, OH 44115-2191 3