Appeal No. 2001-1231
Application No. 08/976,371
while the claims are not so limited. An effective comparison of
the claimed product with the prior art must be commensurate in
scope with the claims sought to be patented. See In re Boesch,
617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980).
For the foregoing reasons and those stated in the Answer,
we determine that the examiner has established a prima facie case
of unpatentability in view of the reference evidence, which has
not been sufficiently rebutted by appellants. Accordingly, we
affirm the examiner’s rejection of claims 7-11 under 35 U.S.C.
§ 102(b)/§ 103(a) over Warner.
C. The Rejections involving Wideman
The examiner finds that Wideman teaches SAF carbon black,
which has the claimed size by definition, and also carbon black
having the claimed area with butadiene rubber (Answer, page 3).
From these findings, the examiner states that the product of
Wideman is substantially the same product as claimed and the
burden of proof has shifted to appellants (id.).
The error in the examiner’s rejection, as we see it, is as
follows. Wideman discloses SAF carbon black, from a list of
several main types of carbon blacks, with a particle size of
11
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