Appeal No. 1996-2758
Application No. 08/103,792
However, claims 34 and 35 stand on a different footing.
They are limited to using 1, 2-dichlorobenzene, 1, 3-
dichlorobenzene or the mixtures thereof as the non-aqueous
solvent for the claimed electrolyte. According to the
examiner (Answer, pages 5 and 9):
The [sic, use of] 1,2-dichlorobenene or 1,3-
dichlorobenzene as the organic solvents are also
[sic, would have also been] obvious to the skilled
artisan. . . . As stated supra the reference
explicitly teaches that 1,2-dichloroethane is one of
the solvents which are used. Thus, the skilled
artisan would recognize that the dichloro solvents
are equally useful. . . .
The claims are drawn to 1,2-dichlorobenzene and
1,3-dichlorobenzene, these are equivalent to the
1,2-dichloroethane.
However, the examiner’s conclusory statements are unsupported
by any factual evidence. No evidence is relied on to show
equivalency between the claimed aromatic and the prior art
alkyl compounds. Thus, we agree with appellants that the
examiner has not satisfied his initial burden of establishing
a prima facie case of obviousness regarding the subject matter
of claims 34 and 35 within the meaning of 35 U.S.C. § 103.
Accordingly, we reverse the examiner’s decision rejecting
claims 34 and 35 under 35 U.S.C. § 103.
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