Appeal No. 1996-2626
Application No. 08/286,046
either by argument or evidence. Therefore, we affirm the rejection of claims 18 and 21-24
under 35 U.S.C. § 103 over the combination of Jones, Burton and Burditt.
Claim 20:
Appellant has separately argued that claim 20 is patentable over Jones, Burton
and Burditt since the references do not disclose the particular N,N-dipolyoxyethylene-N-2-
hydroxyamine anti-static agent required by claim 20. While the examiner has cited Burton
as disclosing the anti-static agent of claim 20, our review of this reference, as well as
Jones and Burditt, does not disclose a N,N-dipolyoxyethylene-N-2-hydroxyamine useful as
an anti-static agent. The examiner offers no other evidence which would reasonably
indicate that the anti-static agent of claim 20 was known at the time of the invention. Thus,
the examiner's rejection of this claim is fatally defective since it does not properly account
for and establish the obviousness of the subject matter as a whole. 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 claim 20 under 35 U.S.C. § 103 is reversed.
SUMMARY:
The rejection of claims 18 and 21-24 under 35 U.S.C. § 103 is affirmed. The
rejection of claim 20 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with this appeal
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