Appeal No. 95-1250
Application 07/901,722
Dianhydride,” Plast. Massy, Vol. 9, pp. 66-67 (1989) (an English translation of the
original article written in the Russian language).3
The Rejection
Claims 1-3, 19-21 and 24 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Pokora taken with Hayashi together either alone or in view of Nikolaev. According to appellant,4
all of the claims stand or fall together (brief, p. 4).
Opinion
We have carefully considered the respective positions advanced by appellant and the examiner.
However, for the reasons set forth below, we will not sustain the examiner's rejection for obviousness
under 35 U.S.C. § 103.
Under 35 U.S.C. § 103, the initial burden of establishing a prima facie case of obviousness
rests on the examiner. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1967); In re Piasecki, 745 F.2d 1468, 1471-1472, 223 USPQ 785, 787-788
(Fed. Cir. 1984). This burden is satisfied by showing that the prior art would have suggested the
claimed invention to one having ordinary skill in the art. In re Lalu, 747 F.2d 703, 705, 223 USPQ
3 The English translation of this reference was prepared by The Ralph McElroy Translation Company.
4The ground of rejection set forth in the examiner’s answer is different from that set forth in the final rejection
(Paper No. 8). In his final rejection, the examiner made two grounds of rejection. The first was a rejection of claims 1-3
under 35 U.S.C. § 103 as being unpatentable over Pokora in view of Hayashi and Nikolaev. The second was a rejection
of claims 17-24 under 35 U.S.C. § 103 as being unpatentable over Pokora in view of Hayashi and Nikolaev.
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