Appeal No. 2000-1420 Page 3
Application No. 08/875,528
Claims 13-17, 19-22 and 24-32 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Miyata ‘523 or Miyata ‘525 in
view of Miyata ‘814 or Miyata ‘626. Claims 13-17, 19-22 and 24-
32 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Wautier in view of Miyata ‘814 or Miyata ‘626.
OPINION
We refer to the briefs and to the answer for a complete
exposition of the respective positions advocated by appellants
and the examiner concerning the above noted rejections. Upon
careful consideration of the opposing arguments presented on
appeal, we concur with appellants that the examiner fails to
establish how the applied prior art establishes a prima facie
case of obviousness of the claimed subject matter. Accordingly,
we will not sustain the examiner's rejections.
When an examiner is determining whether a claim should be
rejected under 35 U.S.C. § 103, the claimed subject matter as a
whole must be considered. See Ex parte Ochiai, 71 F.3d 1565,
1569, 37 USPQ2d 1127, 1131 (Fed. Cir. 1995). The subject matter
as a whole of process claims includes the starting materials and
product made. When the starting and/or product materials of
the prior art differ from those of the claimed invention, the
examiner has the burden of explaining why the prior art would
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