Appeal No. 2000-1804
Application 08/668,598
this “family” renders the claimed subject matter obvious. Furthermore, we agree with
the Appellant that the ingredients in the coating compositions of the references are
substantially different from the claimed composition.
The Examiner bears the burden of proof in the first instance, and for the reasons
noted above, on balance we conclude that this burden has not been shown. We are
not convinced that one of ordinary skill in the art would be sufficiently motivated or
taught that the higher molecular-weight polymer of Bagley could be incorporated into a
coating composition such as that disclosed in Cuthbert or Stark-Kasley with a
reasonable expectation of success.
Accordingly, we reverse the rejection of claims 1, 2, 7, 21-28, 34, 35, and 37
under 35 U.S.C. §103(a). As the remaining two rejections under 35 U.S.C. §103(a) are
founded upon this rejection, we reverse them for the same reasons as stated above.
Summary of Decision
The rejection of claims 1, 2, 7, 21-28, 34, 35 and 37 under 35 U.S.C. § 103(a) as
being unpatentable over Bagley in view of either Cuthbert or Stark-Kasley, or vice-
versa, is reversed.
The rejection of claims 3, 5, 6, 21, 24, 27-29, 34, 35, and 37 under 35 U.S.C.
§103(a) as being unpatentable over Bagley in view of either Cuthbert or Stark-Kasley or
vice versa further in view of Burzynski is reversed.
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