Appeal No. 95-1628
Application 08/067,750
The burden is upon the examiner to establish that the
products of the applied references are identical or
substantially identical to the products defined in product-by-
process style in appealed claim 1 even though produced by a
different process in order to make out a prima facie case of
anticipation or obviousness. In re Spada, 911 F.2d 705, 709,
15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Thorpe, 777 F.2d
695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Best, 562
F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977). In
order to carry his burden, the examiner must provide in the
record evidence and/or scientific reasoning to establish the
reasonableness of his position that the prior art processes
produce the claimed foamed plastic as the mere possibility or
probability that such a result may be inherent in the
processes is not sufficient. See In re Oelrich, 666 F.2d
5478, 581, 212 USPQ 323, 326 (CCPA 1981); Ex parte Levy, 17
USPQ2d 1461, 1462-64 (Bd. Pat. App. & Int. 1990), and cases
cited therein; Ex parte Skinner, 2 USPQ2d 1788 (Bd. Pat. App.
& Int. 1987).
Indeed, it is not apparent to us from the record that the
processes disclosed in the references would at some point
inherently produce a foamed plastic which has cells containing
an oligomer or a polymer derived from a foaming monomer having
a conjugated unsaturated carbon group. In Gavoret, it is
apparent that
a portion of the hydrocarbon component remains within
the pearls of the copolymer for subsequent function as
the expansion agent. [Col. 2, lines 22-24.]
Indeed, this reference provides in Example 6 that butadiene
along with butene was used to prepare polystyrene pearls and
further that butadiene and other monomers containing a
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007