Appeal No. 1997-1298
Application No. 08/227,158
35 U.S.C. ' 103 Rejection
Claims 22 and 23 stand rejected under 35 U.S.C. ' 103 over the combined
teachings of Del Pico and Kuhls. We reverse. In our view, the examiner failed to sustain
his initial burden of showing that the same or substantially the same product is taught by the
Del Pico and/or Kuhls, and thus the burden of persuasion has not shifted to the appellants.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
The examiner's position is as follows:
[C]laims 22 and 23 are rejected under 35 U.S.C. ' 103 as being
Del Pico suggests a process for concentrating polymeric latex
particles with an ultrafiltration process with a semi permeable
membrane.
Kuhls suggests recycling polymer dispersions with ultrafiltration
through semi permeable membranes.
It would have been obvious to one of ordinary skill in the art at the
been shown. This is a product by process and the invention is defined
in a product by process claim by the product not that process.[7]
On this record, the examiner has failed to explain why one skilled in the art would use the
Kuhls' membrane as the membrane in the Del Pico process or how the use of the
Examiner's Answer, pp. 4 and 5. Column and line numbers have been omitted.
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