Appeal No. 2001-0955
Application No. 08/815,971
unpatentable under 35 U.S.C. § 101, thus leading to a determination that the § 101
rejection before us is improper. However, even assuming that the examiner has
established a prima facie case, the rejection still would be improper. This is because
the appellant’s evidence of utility and thus patentability for the here claimed invention,
though perhaps of limited probative value in some instances, outweigh by far any
evidence of record supporting the examiner’s contrary position. As a consequence, the
totality of the record before us, on balance, unquestionably weighs most heavily in favor
of an ultimate determination that the appealed claims are patentable under 35 U.S.C. §
101. Id.
Under these circumstances, the examiner’s § 101 rejection of claims 28-54
cannot be sustained.
OTHER ISSUES
Upon return of this application to the jurisdiction of the Examining Corps, the
examiner and the appellant should address the issue of whether the composition claims
on appeal should be rejected under the judicially created doctrine of obviousness-type
double patenting over the composition claims of the appellant’s Patent No. 5,607,667.
In this regard, we observe, for example that appealed composition claim 1 and patent
composition claims 1/5 both include an aqueous suspension of charged colloidal silica
particles of a size between 10 and 100 angstroms. The guidelines in § 804 of the
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