Appeal No. 1999-0697 Page 5
Application No. 08/743,151
not teach the purpose of that ingredient or how much stearic
acid may be optionally used for that unstated purpose (brief,
pages 8 and 9 and reply brief, page 2).
On this record, we agree with appellant that the examiner
has not carried the burden of establishing that Laumann would
have rendered the claimed coating composition and paper coated
with same prima facie obvious to one of ordinary skill in the
art. Here, we find insufficient direction in the relied upon
teachings of Laumann to alone have reasonably suggested
including an amount of stearic acid in a coating corresponding
to the appellant’s claimed amount to one of ordinary skill in
the art. While we are mindful that the examiner has opined
that stearic acid is a known wax dispersant (answer, page 5),
we note that appellant has disputed that assertion (answer,
page 9 and reply brief, page 2). The examiner has offered no
other evidence to support that allegation and we are not
inclined to dispense with such proof under these
circumstances. Moreover, the examiner has not established
that it would have been prima facie obvious to one of ordinary
skill in the art to use stearic acid in amounts corresponding
to the claimed amount in the coating composition for any
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