Appeal No. 2002-2314
Application No. 09/213,671
in the form of a solution including a solvent such as
methylethylketone (e.g., see lines 9-16 in column 5).
As correctly argued by the Appellant, the Daude reference
contains no teaching or suggestion that the aforementioned solvent
is operative to allow patentee’s resin to dissolve and become
impregnated in the PVC substrate as required by all appealed
claims. According to the Examiner, however, the fact that
patentee’s solvent dissolves the PVC component of his reactive
composition “is held to implicitly indicate that the same solvating
effect would be performed on [patentee’s] PVC substrate, in the
(same) manner envisioned and claimed by appellant” (answer, page 5;
emphasis deleted). Thus, it appears to be the Examiner’s position
that Daude’s solvent inherently would be operative to allow his
resin to not only dissolve but also become impregnated in the PVC
substrate.
It is well settled that the initial burden of establishing a
prima facie basis for denying patentability rests upon the Examiner
and that the Examiner, if relying upon a theory of inherency,
must provide a basis in fact and/or technical reasoning to
reasonably support a determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied
prior art. Ex parte Levy, 17 USPQ2d 1461, 1463-64 (Bd. Pat. App. &
44
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007