Appeal No. 95-4577
Application No. 08/001,192
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the
appellants and the examiner concerning this rejection.
OPINION
Because the examiner has failed to carry his initial
burden of establishing a prima facie case of obviousness, the
above noted rejection can not be sustained.
According to the examiner, the non-stick characteristic
recited in the appealed claims would be inherently possessed
by the composition of Yoshimura. It is well settled, however,
that an examiner must provide some evidence or scientific
reasoning to establish the reasonableness of his or her belief
that the functional limitation of a claim, such as the here
claimed non-stick feature, is an inherent characteristic of
the prior art. Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd.
Pat. App. & Int. 1986). In the case before us, the examiner
has advanced no such evidence or reasoning and thus has failed
to establish a prima facie case for his inherency position.
With regard to the here claimed coating thickness
limitation of up to 50 microns, the examiner simply states
that "[t]he [Yoshimura] composition can be applied such as
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