Appeal No. 2001-0389 Page 5
Application No. 09/237,880
Solvent Yellow 138. It is the examiner’s burden to do so in
order to establish a prima facie case of indefiniteness
under 35 U.S.C. §112, second paragraph.
To the extent the examiner’s rejection is based on
35 U.S.C. § 112, first paragraph, appellants have identified
two manufacturers on page 8 of the specification. Also, as
recognized by the examiner on page 2 of Paper No. 7,
appellants provided documents indicating that Sandoz
Chemicals and Boulder Scientific Company are suppliers of
C.I. Solvent Yellow 138. These documents provide
information about the dye, including its chemical family,
“styryl dye”, pH, solubility, odor, and color. Should these
companies stop making the product, the examiner has not
demonstrated that one of ordinary skill in the art, armed
with this information, would not be able to formulate a
composition that correlates to the color of C.I. Solvent
Yellow 138. Moreover, “the probability of all these
manufacturers choosing to cease manufacture or to change the
composition of their respective products is far less than
the probability of any one of them choosing to do so”. In
re Metcalfe, 410 F.2d 1378, 1382, 161 USPQ 789, 792-793
(CCPA 1969).
In view of the above, we determine that the examiner
has not met his burden of establishing a prima facie case.
We therefore reverse.
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