Appeal No. 1997-2977
Application No. 08/431,688
Once a prima facie case of obviousness is established,
the burden of proof shifts to the appellants to rebut the
prima facie case by presenting convincing argument or evidence
(e.g., unexpected results). In re Mayne, 104 F.3d 1339, 1343,
41 USPQ2d 1451, 1455 (Fed. Cir. 1997) (“With a factual
foundation for its prima facie case of obviousness shown, the
burden shifts to applicants to demonstrate that their claimed
fusion proteins possess an unexpected property over the prior
art.”).
Here, the appellants argue that Mozelewski “says nothing
about an outer space environment” (substitute appeal brief,
page 10). Further, the appellants urge that Mozelewski is not
concerned with solving the same problem confronted by the
appellants, i.e. the problem of protecting the white paint
before the structure is placed in outer space (substitute
appeal brief, pages 11-13). However, as admitted by the
appellants (substitute appeal brief, page 12), Mozelewski
provides a strong incentive or motivation for one of ordinary
skill in the art to apply a fluoropolymer coating onto Babel’s
coated substrate, so as to arrive at the appellants’ claimed
invention, for the purpose of protecting the aluminum from
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