Appeal No. 95-4733
Application No. 08/091,030
that disclosed by Dickinson. (Answer, paragraph3
bridging pages 4-5).
The examiner does not explain in the Answer why the
coating of Okai would have rendered obvious the “fused”
borosilicate glass coating on the steel element as recited in
appealed claim 1. The examiner, in the final rejection,
states that “[t]he term ‘fused’ is a process limitation and is
not being given patentable weight.” (Page 2, Paper No. 4).
However, all limitations recited in the claims must be given
effect. In re Angstadt, 537 F.2d at 501, 190 USPQ at 217.
The examiner, on page 5 of the Answer, improperly attempts to
shift the burden to appellant to show that a “fused”
borosilicate glass coating produces better results than the
painting or coating of Okai. As noted previously, the initial
burden of establishing a prima facie case of unpatentability
rests with the examiner. In re Oetiker, supra. The
examiner has not presented any reasoning or evidence that the
artisan would have reasonably believed that the “coating” of
Okai would be the same or substantially the same as the
3It is not contested by appellant that Dickinson discloses
the steel composition recited in the claims on appeal. See
the Brief, page 2, and the specification, page 4.
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