Appeal No. 1996-4036
Application 08/078,479
over EPA ‘988 and over Ferguson, respectively (answer, pages 3 and 4).3
It is well settled that the examiner must carry the initial burden of establishing a prima facie
case of anticipation by showing that all of the elements of the claimed invention are described in a single
reference sufficiently to have placed a person of ordinary skill in the art in possession of it. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). “[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art are the same , the applicant
has the burden of showing that they are not.” Spada, 911 F.2d at 709, 15 USPQ2d at 1658.
Appellant submits that the references do not anticipate the appealed claims because while the
films disclosed therein comprise an ethylene vinyl acetate copolymer having a percent by weight vinyl
acetate which falls within the range of “nine to twenty percent by weight” specified in appealed claim 1,
there is no teaching in either reference that the ethylene vinyl acetate copolymers further meet the
specified limitation of a “narrow molecular weight distribution defined by a polydispersity ratio (M /M )
z n
of 5 to 10 wherein the number average molecular weight (M ) is between 15,000 and 30,000” (brief,
n
page 11). Appellant points out that there is evidence in the specification that ethylene vinyl acetate
copolymers having a vinyl acetate content falling with the claimed range “do not all fall within the narrow
molecular weight distribution range as defined in the claims,” relying on the “comparative examples”
(brief, page 12). We observe similar disclosure to the same effect at page 10 of the specification.
Appellant alleges that “neither of these references discloses the advantages of the invention as now
claimed” (brief, page 13).
The examiner has taken the position that since the vinyl acetate content of the ethylene vinyl
acetate copolymers of the references fall within the range specified in claim 1, “the narrow molecular
weight distribution would be inherent” in the copolymers, and has required appellant to “provide
convincing factual evidence to the contrary or a side-by-side comparison of” the claimed and prior art
film to establish that the ethylene vinyl acetate copolymer taught by the references “is different from that
3The references relied on by the examiner with respect to the grounds of rejection are listed at page 2
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
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