Appeal No. 96-3690
Application 08/234,516
Accordingly, we conclude that the teachings of Isaka establish a prima facie case of
obviousness with regard to the rejection of claims 14-19 under 35 U.S.C. § 103. On
consideration of all the evidence of record, we must conclude that the greater weight favors
unpatentability. In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993);
In re Piasecki, 745 F.2d 1468, 1471-1473, 223 USPQ 785, 787-788 (Fed. Cir. 1984); In re
Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). Accordingly, we affirm
the examiner’s rejection of claims 14-19 under 35 U.S.C. § 103 over Isaka. However,
because our rationale for affirming claims 14-19 differs from that of the examiner, we
denominate our affirmance as a new rejection to afford appellants the procedural safeguards
associated with 37 CFR § 1.196(b).
OBVIOUSNESS OVER BOTHE
Claims 14-19 stand rejected under 35 U.S.C. § 103 as being obvious in view of Bothe
who discloses a multilayered biaxially oriented multilayered polypropylene film wherein each
layer can include 3-15% by weight of a terpene such as alpha-pinene, beta-pinene and
limonene to improve properties of the film (abstract; col. 2, line 52 to col. 3, line 31; col. 3, line
63 to col. 4, line 2; col. 4, lines 32-39 and 63-65). Appellants argue that Bothe is silent as to
the function of the terpene resins and that Bothe provides no guidance for selecting beta-
pinene and/or limonene from the list of terpene resins which include, inter alia, alpha-pinene,
dipentene, myrcene, bornylene and camphene. We have considered these arguments, but
do not find them convincing because a fair reading of the reference would have reasonably
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