Appeal No. 2000-1031
Application No. 08/591,330
itaconic acid and anhydrides, metal
salts, esters, amides, or imides of the
above acids and the level of grafting
being such that the total amount of
grafting agent in the total composition
a) plus b) plus c) is from 0.01 to 3
weight percent.[1]
The examiner relies on the following prior art reference as
evidence of unpatentability:
Hughes et al. 5,346,963 Sep. 13, 1994
(Hughes)
Claims 1, 2, and 4 through 9 on appeal stand rejected under
35 U.S.C. § 102(b) as anticipated by Hughes. (Examiner’s answer
of Dec. 23, 1999, paper 23, pages 3-5.) Also, appealed claims
1, 2, and 4 through 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hughes. (Id.)
We reverse these rejections.
The initial burden of establishing a prima facie case of
unpatentability rests on the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)(“[T]he
examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of
unpatentability.”) In this case, it is our judgment that the
examiner has not met this initial burden of proof.
1 Claim 1 as it appears in the appendix to the appeal brief
filed Nov. 1, 1999 (paper 21) differs significantly from claim 1
of record in the application.
3
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