Appeal No. 96-2593
Application No. 08/119,075
shape," the examiner takes the position that all claim
features regarding particle size, shape and relationship
between diameter of particle and thickness of thermoplastic
layer are satisfied by Murooka in the "absence of a showing of
a criticality thereof by the appellants" (page 4 of Answer).
Here, the examiner has perpetrated clear error by placing the
cart before the horse. It is axiomatic that before the burden
shifts to an applicant to provide evidence of nonobviousness,
such as evidence of criticality or unexpected results, the
examiner must establish, in the first instance, that the
claimed features would have been prima facie obvious to one of
ordinary skill in the art. In the present case, the examiner
has made no attempt to establish on this record that the use
of aluminum oxide particles having an acicular or platy shape
in a polyester composition would have been obvious to one of
ordinary skill in the art. In the absence of such a finding
by the examiner, appellants are under no burden to demonstrate
that the claimed acicular and platy shapes are critical to the
claimed invention. Consequently, we find it unnecessary to
evaluate the comparative data in appellants' specification as
evidence of nonobviousness.
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