Appeal No. 1996-1974
Application No. 07/930,738
shown otherwise.
It is well settled that when a claimed product reasonably
appears to be substantially the same as a product disclosed by
the prior art, the burden is properly upon the applicant to
prove with objective evidence that the product of the prior
art does not necessarily or inherently possess characteristics
attributed to the claimed product. See In re King, 801 F. 2d
1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986); In re Best,
562 F. 2d
125-55, 195 USPQ 430, 433 (CCPA 1977).
As for claims 13-14, the examiner has failed to satisfy
his initial burden to establish why it would have been
obvious, withing the purview of 35 U.S.C. § 103, to use an
aryl ether disulfonic acid, in particular, as a dopant in
Naarmann absent any teaching or suggestion in the prior art to
do so. The examiner has failed to offer any rational
explanation as to why one of ordinary skill in the art would
have expected such compounds to be useful for that purpose.
For the foregoing reasons, the decision of the examiner
is affirmed as to claims 1-5, 8-12 and 15, but is reversed as
to claimed 13-14.
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