During the oral argument of In re Kao, the panel had some tough questions for the Associate Solicitor from the PTO. The issue concerned an obviousness rejection that had been made by the Patent Office and whether there had been a sufficient prima facie case made to reject the claim at issue. The issue turned on whether the testing method that was used as part of the cited prior art (the “basket” method) was proved by substantial evidence to be equivalent to the testing method recited in the claim (the “Paddle” method).
The panel took issue with the Office’s contention that it need only make the assertion that the cited references were combinable in order to establish a prima facie case. At one point Judge Linn asked whether the Office is entitled to make a prima facie case by saying: “Black is white; now [Applicant] go prove otherwise.” You can listen to this exchange here: [Listen].
You can listen to the entire oral argument here: [Listen].
You can read the court’s opinion here: [Read].