Appeal No. 2000-1860 3
Application No. 08/679,243
We have carefully considered all of the arguments advanced by the appellants and
the examiner and agree with the appellants that the rejection of the claims under §
103(a) is not well founded. Accordingly, we reverse this rejection.
Rejections under 35 U.S.C. § 103(a)
"[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." See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
relies upon a reference to Kinderman to reject the claimed subject matter and establish a
prima facie case of obviousness. The premise of the rejection is that with respect to
colloidal aluminum modified silica particles, these particles appear to be those claimed.
See Answer, page 3. Furthermore, with respect to the phosphate ion requirements of the
claimed subject matter, the examiner states that, “[t]he taught amounts are not given in
terms of g nor g/l, but the taught amount appear[s] to overlap the claimed ranges.” Id.
We conclude that neither hypothesis is sufficient to meet the requirements of the claimed
subject matter nor establish a prima facie case of obviousness.
Kinderman is directed to a lithographic fountain concentrate comprising colloidal
silica, a defined polyacrylic acid and phosphate ion. See column 1, lines 5-8 and 59-61.
The appellants fail to argue any distinction between a fountain concentrate and a
dampening solution. Accordingly, we treat the fountain solution as a dampening
solution. See Brief, page 6.
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