Appeal No. 1997-3611
Application No. 08/439,414
12-66, together with Freedman’s Figures 1A to 2D. According
to the examiner (Answer, page 4):
Appellant[s] is [sic, are] arguing process
limitations which are given little or no weight in
determining the patentability of the claimed product
in the absence of a factual showing that the label
of the claimed invention differs from that of the
prior [art].
In so stating, the examiner ignores the fact that he has the
initial burden of establishing the “virtual identity” between
the claimed coextruded printable label face layer and the
printable label face layer (face stock 30) described in the
Freedman reference. In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990); In re Thorpe, 777 F.2d 695, 697-
98, 227 USPQ 964, 965-66 (Fed. Cir. 1985). The examiner has
improperly shifted the burden to appellants, without meeting
his own.
Thus, on this record, we conclude that the examiner has
not established a prima facie case of obviousness regarding
the claimed subject matter within the meaning of 35 U.S.C. §
103. Accordingly, we reverse the examiner’s decision
rejecting claims 9 through 12 and 36 through 39 under 35
U.S.C. § 103 as unpatentable over Freedman.
OTHER ISSUE
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