Appeal No. 1997-4434
Application No. 08/189,053
molecular weight of about 1500 would be rendered
prima facie obvious.
It is possible that the examiner’s assertion may be correct.
However, it is incumbent upon the examiner to supply the
factual basis for his assertion. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967) (“[w]here the legal
conclusion [of obviousness] is not supported by facts it
cannot stand”). On this record, we find no factual basis to
support the examiner’s assertion that the use of polyethylene
glycols having the claimed molecular weight to form the
tackifying resin of Columbus would have been obvious to one of
ordinary skill in the art. As correctly argued by appellants,
Columbus exemplifies only those polyethylene glycols having
molecular weights significantly lower than that claimed. The
examiner has not supplied any evidence to establish that one
of ordinary skill in the art looking to improve a tackifying
resin, such as that described in Columbus, would employ the
so-called “common polyethylene glycols having a molecular
weight of 1500 to 20,000". The examiner has not shown that
common polyethylene glycols having a molecular weight of 1500
to 20,000, for example, are capable of “providing maximum
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