Appeal 2007-2603
Application 10/958,559
nature of the problem itself.”). In our view, the Examiner properly set forth a
prima facie showing of obviousness for the reasons well-stated in the
Answer. Thus, the burden was properly shifted to the Appellants to come
forward with evidence or argument in rebuttal. In re Soni, 54 F.3d 746, 749,
34 USPQ2d 1684, 1686 (Fed. Cir. 1995). Appellants’ arguments are not
sufficient to satisfy this burden because they fail to address the Examiner’s
reliance on the teachings of Tomka for motivation to provide the
composition of Ryan with materials containing less than 1% free water (see
Answer 5). Likewise, we are not persuaded by Appellants’ argument that
the transitional phrase “consisting of” renders claim 4 patentable over the
combined teachings of Ryan and Tomka. Appellants argue, in particular,
that the phrase “consisting of” excludes any element not specified in claim 4
and, therefore, would exclude polylactide, an essential component of Ryan’s
fibers (Br. 4). Appellants have not, however, refuted the Examiner’s finding
that Ryan’s polylactide meets the claim 4 limitation of “a thermoplastic
polymer having a molecular weight of from about 5,000 g/mol to about
500,000 g/mol” (see Answer 6).
ORDER
The rejection of claims 1-9 under 35 U.S.C. § 103 as unpatentable
over Ryan in view of Tomka is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(i)(iv).
AFFIRMED
clj
6
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013