Appeal No. 95-0442
Application 08/026,183
resin generally is 500-5000 (col. 3, lines 38-41), which overlaps
with appellants’ range of epoxy equivalents. However, the range
of phenolic resin contents preferred and claimed by Yamamoto is
40-90 wt% (col. 4, lines 5-6; claim 1), which is a substantial
amount. We cannot determine from the record what effect the
presence of such an amount of phenolic resin would have on the
penetrability of appellants’ claimed composition. Thus, we
cannot determine whether Yamamoto’s phenolic resin is excluded by
the term “consisting essentially of” in the preamble of
appellants’ claim 1.
The examiner is of the view that appellants have the burden
of showing that Yamamoto’s phenolic resin would materially affect
the basic and novel characteristics of their composition (answer,
page 4). This view is incorrect because the examiner has the
initial burden of establishing a prima facie case of obviousness.
See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984); In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976). When a prima facie case of obviousness has been
established, appellants then have the burden of rebutting it by
presenting objective evidence of non-obviousness. See Piasecki
at 1472, 223 USPQ at 788; In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 882 (CCPA 1981).
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