Appeal No. 1999-0771
Application No. 08/640,144
ester units in an amount equal to (1-x), wherein x is a value
between 0.1 and 1.0.1
What is clearly missing from the rejection based on 35 U.S.C.
§ 102(b) is any explanation of why Green ('052) "clearly
anticipates" the claimed antihalation composition comprising a
resin binder composed of anthracene units and carboxy and/or alkyl
ester units. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984) (the examiner bears the initial burden of
presenting a prima facie case of patentability). For this reason,
the rejection of claim 38 under 35 U.S.C. § 102(b) as being clearly
anticipated by Green ('052) is reversed.
B. Claims 39 through 45
Claims 39 through 45 depend from claim 38. Therefore, for the
reasons set forth above reversing the rejection of claim 38, the
following rejections are also reversed: (1) the rejection of claims
39 and 45 under 35 U.S.C. § 102(b) as being clearly anticipated by
Green ('052), (2) the rejection of claims 40 through 42 under 35
U.S.C. § 103 as being unpatentable over Green ('052) in view of
Green ('938), (3) the rejection of claims 43 and 44 under 35 U.S.C.
1In the event of further prosecution, the examiner should
determine whether claim 38 is described within the meaning of 35
U.S.C. § 112, first paragraph.
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