Appeal No. 1996-2626
Application No. 08/286,046
anti-static agents known for use in this type of polymeric product. Thus, the examiner has
established that the claimed subject matter would have been prima facie obvious within the
meaning of 35 U.S.C. § 103 at the time of the invention by appellant. Where, as here, a
prima facie case of obviousness has been established, the burden of going forward shifts
to the appellant. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984), In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Appellant argues that (Brief, page 8)
the references, whether taken alone or in combination, do not teach or suggest the
presently claimed process . . . .
However, as we have previously stated, the process of preparing a product, even where
the process has been demonstrated to be patentable, will not serve, standing alone, to
render patentable a product which is old or obvious. See In re Wertheim, 541 F.2d 257,
271, 191 USPQ 90, 103 (CCPA 1976) ("[T]he patentability of the products defined by the
claims, rather than the processes for making them, is what we must gauge in light of the
prior art.").
Appellant additionally argues that the references fail to disclose the use of the
polyoxyethylene alkylamine anti-static agent of claim 18 (Brief, page 8). We do not agree.
We read claim 18 to require the use of an anti-static agent generically designated as a
"polyoxyethylene alkylamine". That claim 18 is generic is evidenced by claim 20, which
depends therefrom and is directed to a subgenus or specie of the anti-static agent of claim
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