Appeal No. 95-4036
Application No. 08/137,332
would have been obvious).
Moreover, Markle fails to disclose or suggest producing
the dispersing agent in situ. Although Gunesin is silent as
to the process for producing the dispersing agent, appellants
characterize the dispersing agent in Gunesin as “pre-made”
(Brief, p.5). The examiner does not dispute this
characterization (Answer, pp.3-4):
Appellants’ primary point of contention with the
rejection is that the instantly claimed method is
intended to formulate the dispersing agent in situ
and appellants point out that the prior art teaches
a preformed dispersing agent. This is not
persuasive . . . . There remains no showing or
allegation of unexpected results with respect to
formulating the dispersion stabilizer in situ as
opposed to adding it in a preformed manner.
The examiner has improperly shifted the burden to appellants.
The examiner bears the initial burden of presenting a prima
facie case of unpatentability. In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). We agree with
appellants that the examiner has failed to satisfy that
burden.
REVERSED
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