Ex parte EDWARDS et al. - Page 5




              Appeal No. 1996-0575                                                                                         
              Application No. 08/219,551                                                                                   


                     requiring putting one specifically defined resin and the pigment together, and                        
                     then putting this first mixture together with the second specifically defined                         
                     resin.                                                                                                
                                                                                                                          
              The examiner offers no evidence or facts which would have suggested to one of ordinary                       
              skill in this art at the time of the invention, that the method of preparation disclosed by Pettit           
              should be modified in a manner which would reasonably lead to the claimed method of                          
              manufacture.                                                                                                 
                     The examiner bears the initial burden of presenting a prima facie case of                             
              obviousness.  In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444                                       
              (Fed. Cir. 1992).  On the record before us, we conclude that the examiner has failed to                      
              establish a prima facie case of unpatentability with regard to the claimed method. Where                     
              the examiner fails to establish a prima facie case, the rejection is improper and will be                    
              overturned.  In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988).                           
              Therefore, the rejection of claims 13-15, 17-21, 23, 30-40, 48, 50-58, 62-63. 65-66, and                     
              68-69 under 35 U.S.C.  103 is reversed.                                                                     
              Claims 5-7, 9-11, 22, 24-29, 41-47, 59-61, 64, and 67:                                                       




                     These claims are directed to thermosetting paint compositions comprising a                            
              mixture of resins having specifically defined glass transition temperatures (Tg) wherein the                 


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