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Aktiengesellschaft, Appeal 2009-014,596 (BPAI 2111). Judge Delmendo.

Jim Ruttler, Patent Attorney

Posted Wednesday, January 12, 2011 by Jim Ruttler

The Board denied the Examiner’s request for a rehearing following the Board’s reversal of all rejections.
In denying rehearing, the Board indicated that the reversal of the rejections was based upon the fact that the Examiner did not address the claim limitations. The claim limitations included relative weight ratios (parts by weight). The cited reference only disclosed absolute weights and not relative weights.

The Board stated as follows:

For example, if 20 lbs of aromatic amine-initiated polyol, component a), were used in the prior art, the Examiner must then show that the prior art also discloses the use of about 50 to 95 lbs. of cyclopentane, component c)2). The Examiner failed to do that. While the Examiner is correct that the recited amounts for components a), c)1), and c)2) are not weight percents (Req. Reh’g at 1-2), the original Decision never concluded as such (Decision at 3-4, 5-6). The Examiner concluded that the basis of the weights to be measured is not recited in the claim (Ans. 4). We agree with this finding. However, the amount limitations must still be considered and addressed in rejecting the claim even in the absence of such recitation of weight basis.

My question is why does the examiner care so much about being reversed?

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