Hayes Soloway, P.C.

Case Results

Ex parte Edward D Riley

June 2012

STATEMENT OF THE CASE

(Reprinted from the Board's opinion)

Appeal 2011-004110
Application 11/369,428


This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 16-28. We have jurisdiction under 35 U.S.C. § 6. We refer to the Appeal Brief for the rejections to be reviewed on appeal.

OPINION

The dispositive issue on appeal is: Did the Examiner err in determining that the combination of Mönch (US 5,840,261 issued Nov. 24, 1998), Dorin (US 6,599,482 B1 issued July 29, 2003) and Berry (US
5,918,740 issued July 6, 1999) would have led one skilled in the art to a container system for medical instruments with a tray base having a plurality of perpendicularly intersecting ribs, the intersecting ribs having a circular cross-section and central axes configured in a plane as required by the subject matter of independent claim 16?1, We answer this question in the affirmative and we REVERSE.


Appellant argues that neither Mönch, Dorin or Berry provide motivation to one skilled in the art to combine the references because neither of the references, either alone or combined, teach the structural limitations of a plurality of perpendicularly intersecting ribs, the intersecting ribs having a circular cross-section and central axes configured in a plane as required by the subject matter of independent claim 16. App. Br. 18; Reply Br. 6.

We agree with Appellant that the Examiner does not adequately explain where the motivation to combine the teachings of Mönch, Dorin or Berry is derived from the prior art. The Examiner's reasoning (Ans. 9, 10)
does not provide an adequate explanation of how one skilled in the art would modify the tray base of Mönch in view of the teachings of Berry to arrive at the subject matter of independent claim 16. The Examiner has also failed to explain why the construction techniques of Möonch, Dorin and Berry are
compatible with one another. For the foregoing reasons and those presented by Appellant, we
determine that the Examiner's conclusion of obviousness is not supported by the facts. “Where the legal conclusion [of obviousness] is not supported by facts it cannot stand.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, the Examiner's rejection of claims 16, 17, 19, 22, 23 and 25 over Mönch, Dorin and Berry is reversed.

ORDER

The Examiner's decision to reject claims 16-28 under 35 U.S.C. § 103(a) is reversed.

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