Appeal No. 95-3170 Application No. 07/813,749 Upon careful consideration of the opposing arguments presented on appeal, we will sustain neither of the examiner's rejections. Regarding the rejection of the appealed claims under § 112, first paragraph, we are in essential agreement with the position set forth by appellants in their Reply Brief. In essence, the examiner has not carried his initial burden of establishing with objective evidence or compelling scientific reasoning that one of ordinary skill in the art would not be able to practice the claimed invention without undue experimentation. In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). The examiner's statement that forms the basis of his legal conclusion, that it is not possible for one skilled in the art to produce the claimed photoresist from the brief description found in the specification, is without factual support (page 5 of Answer). We now turn to the examiner's rejection of the appealed claims under 35 U.S.C. § 103. The examiner appreciates that Diemeer, the primary reference, fails to disclose (1) the claimed photoresist that has a non-linear optical property which increases with respect to increasing light intensity and -3-Page: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007