Appeal No. 2005-1608 Page 7
Application No. 10/424,327
membrane fabric suggested by the prior art has the same or substantially the same structure and
properties that would be present in a membrane fabric that is pre-shrunk as claimed.
Under the circumstances, we agree with the Examiner that it is reasonable to conclude
that the fabric structure suggested by the prior art combination has the same or a substantially
similar structure to that claimed. Because the PTO does not have the facilities to test the claimed
structure and compare it to the structures of the prior art, it is eminently fair and reasonable to
shift the burden to Appellants to show that the claimed structure is, indeed, patentably different
from the structure of the prior art. Best, 562 F.2d at 1255, 195 USPQ at 433-34; Brown, 459
F.2d at 535, 173 USPQ at 688.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-20 which has not been sufficiently rebutted by
Appellants. In fact, the rejection could have been based on anticipation by Akasu. Note that
anticipation is the ultimate or epitome of obviousness. In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982).
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-20 under 35 U.S.C.
§ 103(a) is affirmed.
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007