Appeal No. 1997-1064
Application No. 08/391,096
incorporation of metal oxides” and thus contemplates the
incorporation of the metal oxide, molybdenum trioxide, the
examiner should be aware that the fact that a claimed species
is encompassed by a prior art genus is not sufficient itself
to establish a prima facie case of obviousness of that
species. In re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552
(Fed. Cir. 1994). Finally, the examiner has provided no
objective evidence or persuasive reasons in support of his
assertion (answer, page 3) that “[o]ne of ordinary skill in
the art would have recognized that solid lubricants for
thermoplastics would function equivalently in thermosetting
polymer compositions.”
Accordingly, the stated rejection of the appealed claims
cannot be sustained. The decision of the examiner is
reversed.
OTHER ISSUES
Prior to taking further action in this application, the
examiner should reconsider the question of obviousness of the
claimed invention by reconsidering the disclosure in Nagahiro
at column 3, line 68 to column 4, line 2 that “lubrication
improving inorganic powders” for use in a thermoplastic binder
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