Appeal No. 2000-0822
Application 09/037,555
heated for twenty minutes in each of Mammino Examples IV and V, reasonably appear to result
in a carrier product having pores that contain a polymer or mixture of polymers resulting from
intra-pore polymerization of monomers in the manner specified in appealed claim 53 (answer,
pages 4-5 and 12), particularly in light of appellants’ countervailing arguments. Indeed,
appellants point out that “due to the lower viscosity of monomer rather than polymer, the process
results in carrier in which a larger amount of the polymer is in the pores,” noting the disclosure at
col. 4, lines 48-51, of Mammino that “the majority of the coating material particles are fused to
the carrier surface” (brief, page 7; reply brief, unnumbered page 3). Thus, on this record, in view
of appellants’ arguments it does not reasonably appear to us that the product produced in the
Mammino Examples is identical to the product defined by the process of appealed claim 53.
Accordingly, to the extent that a prima facie case of anticipation had been made out by
the examiner over Mammino, 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) on the record as a whole in order to maintain the ground of rejection. See generally,
Spada, 911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3. Because the examiner has not again
established that, prima facie, a product prepared in the Mammino Examples reasonably appears
to be identical to a product falling within appealed claim 53 in light of appellants’ arguments, we
reverse the ground of rejection of appealed claim 53 under § 102(b) based on Mammino.
We now consider the ground of rejection of appealed claims 1, 49 and 53 under § 102(b)
as anticipated by Kawata. The examiner points out that the processes of the reference Examples
produce the product shown in Kawata FIG. 1, wherein the “recessed portions 4” are filled with
“resin-coated layer 3” (see col. 5, lines 11-20), from which it “appears that all pores (recessed
portions) are filled with resin” (answer, pages 5-6). The examiner further contends that, in
Kawata Example 9, the temperature employed would remove the solvent (answer, page 6; see
also page 13).
We find that Kawata states that the disclosed process “enables the recessed portions of
magnetic core particles to be reliably filled with the resin coating and portions other than the
recessed portions to be reliably coated with resin” (col. 2, lines 30-33), and thus “the resin-coated
layer has resistance against being peeled off owing to anchoring effect obtained by the resin-
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