Appeal No. 1998-1304
Application 08/444,534
not explained why appealed claim 1 would have a broader interpretation with respect to “acrylic ester
functionality.”
In comparing claim 1 as we have interpreted it above with the teachings of Garratt, it is clear
that the examiner has indeed confused “mixtures” with “molecules” as argued by appellants in their brief.
In the reference, the resin mixture containing a chlorinated natural or synthetic rubber and ethyl acrylate
monomer upon curing by radiation induced free radical polymerization provides a product useful as a
coating, and it is not apparent on this record that this product is a “rubber” molecule falling within claim
1, as appellants point out in the brief.
Thus, to the extent that a prima facie case of anticipation and obviousness had been made out
by the examiner over Garratt in Paper No. 15, the factual arguments by appellants in rebuttal shifted the
burden back to the examiner to again establish the factual underpinning of a prima facie case under §
102(b) and § 103(a) in order to maintain the grounds of rejection. See, e.g., In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Spada, 911 F.2d 705, 707 n.3, 15
USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990). The examiner’s mere conclusion that the “resulting
composition [of Garratt] must contain acrylate or acrylic acid ester functionality,” unsupported by any
evidence or scientific reasoning, does not carry the burden.
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
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)
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