Board Reverses Examiner Who Failed to Provide Evidence to Support the Obviousness Rejection

March 23, 2012 – Blog Post

In Ex parte HENRY et al (Appeal 2011-006558; Application 10/558,753) the Board was presented the question of whether the Examiner adequately supported the rejection based on evidence. The invention in Henry was a process for the manufacture of an aluminum plated strip comprising at least two plating layers of two different aluminum alloys that included a step of applying an anti- sticking agent to cropping areas of at least one surface of each plate --the anti-sticking agent comprising a mixture of a mineral powder and a silicon resin in suspension in water.

The Examiner rejected the claims as obvious based on the combination of obvious over the combination of Applicant’s Admitted Prior Art (AAPA) and Hopper (US 3,981,753) where the Examiner relied on Hopper’s disclosure to teach the silicon resin anti-sticking agent. The Examiner relied on a broad interpretation of the “silicon resin: “[a]s no explicit definition of ‘resin’ has been provided, the Examiner is interpreting ‘silicon resin’ as any compound including silicon, such as water glass or quartz.” However, the Examiner provided no evidence that water-glass is the same as a silicon resin and as a result the Board reversed the rejection stating:

We agree with Appellants that Hopper fails to teach or suggest a silicon resin as required by the claimed invention. (App. Br. 8). We agree with Appellants that the Examiner has not provided evidence that “water glass” is a silicon resin as required by the claimed invention. Water glass is also known as sodium silicate, a mineral. Water glass particles small enough to be suspended in an organic solvent would be fairly described as a “mineral powder.” The Examiner has not directed us to evidence that the one of ordinary skill in the art would call water glass a silicon resin. Nor has the examiner directed us to evidence that the water glass component of Hopper is contained in a resin component as required by the claimed invention. (Cf. App. Br. 8; Reply Br. 7.)

For the foregoing reason, we determine that the Examiner’s conclusion of obviousness is not supported by facts. “Where the legal conclusion [of obviousness] is not supported by facts it cannot stand.” In re Warner, 379 F.2d 10 11, 101 7 (CCPA 1967).