Appeal No. 2001-1986
Application No. 08/719,968
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In other words, the burden of producing a
factual basis to support a Section 103 rejection rests on the examiner. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 177-78 (CCPA 1967).
Here, the examiner recognizes that neither Scheve nor Nakatsukasa teaches the claimed
hydrogenated polyolefin diol as a part of a polyurethane prepolymer. See the Answer, page 3. To
remedy this deficiency, the examiner relies on the disclosures of Reyes, Chen and Hoffmann to
show that it would have been prima facie obvious to hydrogenate the polyolefin diol of the
polyurethane prepolymer described in either Scheve or Nakatsukasa. See the Answer, pages 3 and
4. The examiner, however, acknowledges that “Chen et al, Reyes and Hoffmann do not disclose the
use of urethanized polyolefins.” See the Answer, page 4. In spite of this difference, the examiner
has not demonstrated that the equivalency or advantage applicable to saturating or hydrogenating the
particular polymers described in Reyes, Chen and Hoffmann is equally applicable to the
polyurethane prepolymer of the type described in either Scheve or Nakatsukasa. The examiner
simply has not supplied sufficient factual evidence and/or sound scientific reasoning explaining why
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