Appeal No. 1998-3256
Application 08/692,325
Sandstrom.1, 2 For the reasons pointed out by appellants in the brief, the examiner has failed to make
out a prima facie case with respect to each of the grounds of rejection. We add the following for
emphasis.
Appealed claim 1 is essentially styled in product-by-process format because the recitation “a
dried rubber derived from a second blend of rubber latices, said second blend of rubber latex containing
styrene-butadiene rubber later and acrylonitrile-butadiene rubber latex” would be interpreted by one of
ordinary skill in the art in light of the specification to include rubbers prepared by a process that includes
drying the said blend of rubber lattices (see specification, e.g., page 5, lines 8-13). See, e.g., In re
Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A prima facie case of anticipation is
established when it reasonably appears from the prior art that the claimed products are identical to the
prior art products, and the PTO bears a lesser burden of proof with respect to claims styled in product-
by-process format. See generally, In re Spada, 911 F.2d 705, 707-08, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear to be identical’ to
those described by Smith. While Spada criticizes the usage of the word ‘appear’, we think that it was
reasonable for the PTO to infer that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce polymers having the identical
composition.”).
In this case, the examiner initially stated that appealed claim 1 was anticipated by either Smith or
Ogawa which disclosed the mixing of a dried styrene-butadiene rubber and a dried acrylonitrile-
butadiene rubber, and did not rebut the appellants’ supported arguments that a different product was
produced by drying a blend of styrene-butadiene and acrylonitrile-butadiene lattices as specified in this
claim. Accordingly, to the extent that the examiner had established a prima facie case of anticipation, it
was rebutted by appellants’ arguments, shifting the burden back to the examiner to again establish a
1 Claims 1 through 10 are all of the claims in the application. See the specification, pages 19-21 and
the amendments of January 16, 1995 in parent application 08/518,449 (Paper No. 3).
2 The grounds of rejection are set forth on pages 3-4 of the answer.
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