Appeal No. 1997-3099
Application 08/191,886
For these reasons, the examiner's rejection of the claims on appeal, is fatally
defective since it does not properly account for and establish the obviousness of the
claimed 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 claims 1 - 6, 9 - 56, and
65 - 73 under 35 U.S.C. § 103 is reversed.
While not required for our decision in this appeal, we would note that the examiner,
similarly, has not provided the substantive evidence which would reasonably have led one
of ordinary skill in this art to modify the film or process described by Newsome in a manner
as to arrive at a film or process which would reasonably correspond to the claim limitations
°
such as the requirement that the “EVOH copolymer having a melting point of about 158 C
or lower” (claim 1); “about 30 to less than 50% of an EVOH copolymer” (claim 27); ”an
EVOH copolymer having an ethylene content of at least about 48 mole percent” (claim 40);
and “an EVOH copolymer having an ethylene content of about 38 mole % or higher”
(claims 65 and 69), none of which are explicitly described by Newsome.
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