Appeal No. 2001-0955
Application No. 08/815,971
that dog food sprayed with a solution of Escalade (i.e., the colloidal silica of appellant’s
invention) was significantly preferred over the control dog food.3 Similarly, the
hamburger bun test disclosed at item 11 of the affidavit shows a preference for buns
which contain colloidal silica particles of the invention relative to buns which do not. As
a further example of evidence supporting the above noted conclusion, item 6 of the
Holcomb declaration dated December 28, 1999 makes it clear that the food enhance-
ments shown in specification Examples I-XIII relate to foods which contain colloidal
silica of the invention compared to foods which are identical but for the presence of this
colloidal silica.
The procedural methodology and the allocation of burdens in assessing claim
patentability are well settled. The examiner bears the initial burden of presenting a
prima facie case of unpatentability. If that burden is met, the burden of coming forward
with evidence or argument shifts to the applicant. After evidence or argument are
submitted by the applicant, patentability is determined on the totality of the record by a
preponderance of evidence with due consideration to persuasiveness of argument. In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
In the case before us, it could be argued that the examiner has failed to carry the
initial PTO burden of establishing a prima facie case that the appealed claims are
3 The examiner’s criticisms of this exhibit bridging pages 9 and 10 of the the answer (i.e.,
questioning the difference between flavored water with Escalade and adult plus) quite plainly relate to the
data of the Exhibit E rather than Exhibit D.
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