Appeal No. 1997-3099
Application 08/191,886
DISCUSSION
The rejection under 35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicants. (Id.) In order to meet that
burden the examiner must provide a reason, based on the prior art, or knowledge
generally available in the art as to why it would have been obvious to one of ordinary skill in
the art to arrive at the claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 297 n.24, 227 USPQ 657, 667 n.24 (Fed. Cir. 1985).
On the record before us, the examiner has relied solely on the patent to Newsome
in rejecting the claims on appeal. Newsome describes a multi-layered film of the same
make up as the film of the appealed claims. (Rejection, Paper No. 11, pages 3-4).
However, the examiner acknowledges that “the essential difference between the claimed
invention and cited reference is the thickness of the core layer.” (Rejection, page 6). Each
of the independent claims on appeal are directed to a film, a process of preparing a film or
a product encased in a film wherein the core layer of the film has “a thickness of from about
0.05 to less than 0.10 mils” (claims 1, 27, 40, and 69) or “a continuous core layer less than
0.10 mil” (claim 65).
As stated by the examiner (id.):
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