Appeal No. 95-2773
Application 07/937,953
reverse this ground of rejection because the examiner has not carried the burden of establishing a prima
facie case that the disclosure does not provide a description of the invention defined by the claims to
one skilled in this art.
We will also not sustain the grounds of rejection of the appealed claims under § 103. It is well
settled that in order to establish a prima facie case of obviousness, “[b]oth the suggestion and the
reasonable expectation of success must be found in the prior art and not in applicant’s disclosure.” In
re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). Thus, a prima facie case
of obviousness is established by showing that some objective teaching or suggestion in the applied prior
art taken as a whole and/or knowledge generally available to one of ordinary skill in the art would have
led that person to the claimed invention without recourse to the teachings in appellants’ disclosure. See
generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)
(Nies, J., concurring). The examiner has maintained that Japanese Kokai Patent Publication No. 2-
125214 “shows that it is [sic, was] known in the art to have resin coatings with modulus range
encompasses [sic] those as claimed” (answer, page 5) and has not rebutted appellants’ argument
(answer, pages 5, 6 and 8) that the disclosure of a “layer made of resin with bending elasticity 50-500
kg/cm2” in this reference (e.g., page 1; emphasis ours) is indeed “a Young’s modulus of elasticity of . . .
0.5 to 5 kg/mm2” (principal brief, page 10; reply brief, page 2; emphasis ours). We find no reference
of record which discloses a UV-curing resin which has either of the characteristics based on Young’s
modulus specified in appealed claim 1. Thus, we agree with appellants (reply brief, page 3) that the
record before us supports the inference that the examiner has relied on information gleaned from
appellants’ disclosure in formulating this ground of rejection. Accordingly, we reverse this ground of
rejection because the examiner has not carried the burden of establishing a prima facie case of
obviousness.
- 4 -
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007