Appeal No. 95-4300
Application No. 08/165,565
page 4):
Lupinski shows treated carbon black, clay and titanium dioxide lower heat
release of polycarbonate (example 1). Kelly shows (comp. ex. 11 vs. comp.
ex. 12) that titanium dioxide lowers heat release.
It is the initial burden of the patent examiner to establish that claims presented in an
application for patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). On the record before us, we conclude that the examiner has
made out a prima facie case of unpatentability over the combination of the cited patents.
Curry discloses a combination of resins which correspond to components A, B, and C of the
claimed composition. Further, Curry suggests that it is appropriate to include, in this
compositions, other additives including fillers, pigments and flame retardants. The secondary
references disclose, as old for use in similar compositions, the use of aromatic sulfonic acid
(Mark '245 or 'Mark ';366) as a flame retardant, the use of treated clay or carbon black
(Lupinski - col. 1, line 35) or the use of titanium dioxide or glass fibers (Kelly col. 5, lines 14-
16 and col. 22, lines 41-43). Each of the secondary references provide a clear suggestion or
reason for incorporating the described additives into such a composition. Where, as here, a
prima facie case of obviousness has been
established, the burden of going forward shifts to the appellant. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984), In re Rinehart, 531 F.2d 1048, 1052, 189
USPQ 143, 147, (CCPA 1976).
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