Patent Law

Board Reviews Prior Art for Obviousness, Finds Anticipation

By Alloy Comprising

In Ex Parte SPRIESTERBACH, the Board of Patent Appeals and Interferences handled an appeal from an obviousness rejection of all claims, first independent claim below:

"Claim 6.  A wire based on zinc and aluminum, characterized by containing from 8 to 33% by weight of aluminum and from 10 to 500 ppm of indium, in addition to zinc and the usual impurities."

During prosecution, the examiner rejected all claims as being obvious over JP 47026322 or FR 2704871 in view of the GB 2313382, since JP ?322 or FR ?871 disclosed the composition and GB ?382 disclosed using Zn-Al in wire form for spray coating. In response, the applicant retorted by allegedly exposing a plethora of weaknesses in the examiner?s proposed combination.

After considering the Examiner?s position and the applicants arguments, the Board carefully reviewed the references and noticed what the examiner supposedly didn't, that JP ?322 disclosed test specimens of the alloy cast into test bars having a diameter of 20 mm and length of 150 mm. Seizing this opportunity, the Board interpreted the term "wire" to include such a shape. In denying patentability of the claims, the Board held that JP ?322 alone describes an alloy example within the scope of claim 6 -- "since anticipation is the epitome of obviousness, we sustain the rejection of claim 6 under §103 over JP ?322 alone"--.

Full post as published by Benefit of Hindsight on September 22, 2008 (boomark / email).