Appeal No. 2000-0482
Application 08/569,256
of these arguments is persuasive. Claim 1 uses the term
“comprising” and, therefore, does not exclude additional
unrecited elements such as mineral fillers. Moleculon Research
Corp. v. CBS, Inc., 793 F.2d 1261, 1271, 229 USPQ 805, 812 (Fed.
Cir. 1986), cert. denied, 479 U.S. 1030 (1987). The claims are
also not limited to the use of PTFE strictly as a release agent.
See In re Mraz, 455 F.2d 1069, 1072-73, 173 USPQ 25, 27-28 (CCPA
1972). Accordingly, we find that the examiner has established a
prima facie case of obviousness.
A prima facie case of obviousness may be rebutted if
the appellant (1) establishes unexpected properties in the
claimed composition or (2) shows that the art, in any material
respect, teaches away from the claimed invention. In re
Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Appellants rely on the Yamaguchi Declaration under 37 CFR § 1.132
(Paper No. 16, received January 25, 1999) as providing evidence
of unexpected results. The examiner found that appellants’
evidence was not sufficient to demonstrate a synergistic effect
of the claimed composition since appellants failed to make a
showing of unexpected results commensurate in scope with the
claims. Examiner’s Answer, page 5. We agree. See In re Dill,
8
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