Appeal No. 1998-2317
Application No. 08/327,601
that the water-based adhesive is an acrylic copolymer adhesive
(Answer, page 5). Furthermore, it is the examiner’s position
that the pouch of Stillman is identical to or only slightly
different than the pouch claimed because both pouches use the
same materials for the outer ply, the inner ply, and the
laminating adhesive (Answer, page 9, emphasis added). The
examiner dismisses the Firestone Declaration under 37 CFR §
1.132 (see Appendix B of the Brief) as “an opinion declaration”
since the declarant states that Stillman does not use water-
based adhesives while claim 3 on appeal recites the same
adhesives as Stillman. The examiner further finds that Stillman
additionally discloses saran adhesives “which are known to be
water-based adhesives.” Answer, page 9.
It is well settled that a rejection for anticipation or
lack of novelty requires, as a first step, that all the elements
of the claimed subject matter be described in a single
reference. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655,
1657 (Fed. Cir. 1990). It is equally well settled that the
initial burden of proof in establishing a prima facie case of
unpatentability, whether anticipation or obviousness, rests with
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