Appeal No. 94-1550
Application 07/893,662
defined in the appealed claims is anticipated by well known prior
art. Further, when challenged by appellant, the examiner was4
unable to provide an “instant and unquestionable demonstration”
that the facts taken notice of were indeed “well known” in the
art. Accordingly, the evidentiary record provided by the
examiner in this appeal falls far short of that required to
establish a prima facie case of obviousness for the claimed
subject matter. Nevertheless, as discussed below, there is
evidence in the appeal that factually supports the examiner’s
contention that it would have been obvious to a person ordinary
skill in the art to add a “pesticide” to the formulation of
Dessaint motivated by reasonable expectation of success. See the
Answer at page 4.
In their Brief at page 3, appellant argues that the claim
language “consists essentially of” in appealed claim 1 makes it
clear that appellant’s claims do not cover a formulation which
includes a polyurethane. Appellant further contends that the
Dessaint compositions, as shown by the examples, require the
4An applicant must be given the opportunity to challenge
either the correctness of the fact asserted or the notoriety or
repute of the reference cited in support of the assertion. Such
a challenge should contain “adequate information or argument so
that on its face it creates a reasonable doubt” regarding the
notice taken. In re Boon, 439 F.2d 724, 728, 169 USPQ 231, 234
(CCPA 1971).
6
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