Appeal No. 1999-2383
Application No. 08/573,487
criticality on such a value, while the claimed [sic] is clearly
embraced.” Id. We disagree.
As correctly pointed out by appellants on pages 7-8 of the
Brief and pages 2-4 of the Reply Brief, Hosomura qualifies the
generic disclosure of an AP of 4000 seconds or less by teaching
that, to avoid problems of low strength and drops in the gloss of
solid image, the air permeability of the paper should be at least
about 600 seconds (see Hosomura, col. 13, ll. 43-52). The examiner
states that the reference “clearly establishes the fact that AP
under 600 still gives a useable product, it is simply not an
optimum product for their specific applications.” Answer, page 5.
The examiner finds that the examples of Hosomura show AP values of
490 and 450, while the comparative examples show AP values of 200
and 25. Id.
The examiner has the initial burden of establishing why one of
ordinary skill in this art would have been led to AP values within
the claimed range of 10-90 seconds. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The only
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