Appeal No. 2002-2314
Application No. 09/213,671
patentee’s solution is in contact with his PVC substrate for a
sufficient time and at a sufficient concentration to allow the
dissolved resin to become impregnated in the PVC substrate as
claimed by the Appellant.
In light of the foregoing, it is clear that the Examiner has
failed to carry his initial burden of establishing a prima facie
case for unpatentability based on either anticipation (vis-à-vis
express teachings and/or principles of inherency) or obviousness
with respect to the § 102 and § 103 rejections of claims 48-55, 57,
59-68 and 70 over Daude. The deficiencies of these rejections are
not supplied by the additional prior art applied by the Examiner
and the remaining § 103 rejections advanced on this appeal. For
example, notwithstanding a thorough consideration of the Examiner’s
position, we do not perceive the suggestion and reasonable
expectation of success, which are required for obviousness under
§ 103 (In re O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-
81 (Fed. Cir. 1988)), for modifying the method of Daude so as
to include use of a solvent (e.g., tetrahydrofuran alone or
in combination with acetone as claimed by the Appellant) that
is operative to allow patentee’s resin to dissolve and become
impregnated in the PVC substrate pursuant to the appealed claims
66
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