Appeal No. 1998-3267
Application 08/688,242
as being obvious over Protzmann, Kindt-Larsen et al., Horner et al. and both Brauer et al. references.2
We find that, on this record, the examiner has failed to make out a prima facie case of anticipation and
of obviousness.
It is well settled that the examiner has the burden of making out a prima facie case of
anticipation in the first instance by pointing out where each and every element of the claimed invention,
arranged as required by the claim, is described identically in the reference, either expressly or under the
principles of inherency. See generally, In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990); In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986);
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1458,
221 USPQ 481, 485 (Fed. Cir. 1984). It is also well settled that the examiner has the burden of
establishing a prima facie case of obviousness by showing that some objective teaching, suggestion or
motivation in the applied prior art taken as a whole and/or knowledge generally available to one of
ordinary skill in the art would have led that person to the claimed invention as a whole, including each
and every limitation of the claims, without recourse to the teachings in appellants’ disclosure. See
generally, Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
The appealed claims, as represented by appealed claim 1, are drawn to an initiator system for
polymerization of monomer mixtures wherein the diacyl peroxide component of the system has certain
limitations. The examiner has advanced the position that the limitations on the diacyl peroxide
component “does not distinguish structurally over the initiator system” shown in the references which
“teach and/or describe initiator systems (for polymerization) which are (i) similar, (ii) identical in some
instances and (iii), homologous in other instances” and thus “reasonably describe and overlap with
claimed compositions which are homologous, similar or identical and possess similar structure and
characteristics found in prior art components” (answer, pages 3-4).
action of October 24, 1997 (Paper No. 26). We note that appellants canceled claims 8 through 20 in
the amendment of June 7, 1995, in parent application 08/236,974 (Paper No. 10).
2 Answer, pages 3-4.
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