Appeal No. 2001-1986
Application No. 08/719,968
transitional language “consisting essentially of” excludes only additional components that change
the basic and novel characteristics of Appellant’s invention. However, the initial burden is on the
examiner to show that, on the record before him or her, it is reasonable to shift the burden to the
applicant to show why the additional components result in something other than the claimed
invention. Cf. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“[W]hen
the PTO shows sound basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.” ). Here, Scheve’s teaching of
different relevant properties of printing plates depending on the identities of the prepolymers must
be dealt with on the merits. In other words, to shift the burden to Appellant, the examiner must
show that, not withstanding Scheve’s teachings, one skilled in the art would nonetheless have
expected the presence of polyesters not to have changed the basic and novel characteristics of
Appellant’s invention. Because the examiner has not made such a showing, I find that the weight of
the evidence favors Appellant, and I agree that the examiner’s rejection of claims 13, 15, 16, and 22
over Scheve and the secondary references must be reversed.
For the foregoing reasons, I respectfully concur-in-part and dissent-in-part.
___________________________
MARK NAGUMO
Administrative Patent Judge
CKP/lp
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