Appeal No. 2001-1231
Application No. 08/976,371
examiner states that since the product of the prior art appears
to be identical or substantially identical to that claimed, the
burden of proof has shifted to appellants to show a difference
between the claimed products and those of Warner (id.).
Appellants agree with the examiner that Warner discloses
carbon blacks with the same surface area and particle size as the
claimed carbon black but argues that the burden has not been
shifted to appellants since the examiner admits that Warner does
not teach all the claimed properties (Brief, pages 5 and 7).
This argument is not persuasive since claim 7 on appeal only
requires three properties for the claimed carbon black, namely
particle size, DBP absorption value, and weight percentage of
ellipsoidal aggregates (see claim 7 on appeal). Appellants do
not contest that Warner discloses two of the three claimed
properties (see the Brief, pages 5 and 7).3 With regard to the
property not mentioned by Warner (wt. % ellipsoidal aggregates),
we note that carbon black having a low particle size and low DBP
absorption value, as disclosed by Warner and claimed by
3 Appellants also agree that the “inventive carbon black” has the same
surface area (less than 450 m2/g) as the carbon blacks of Warner, although
this property is not recited in the claims on appeal (Brief, page 7; see also
the Declaration, page 3).
7
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