Appeal No. 2000-2192
Application 08/943,123
fail to find in the record any evidence or a scientific reasoning establishing that the use of
polymers in lubricant compositions by Reick and Lewis or other teachings of these references
would have suggested to one of ordinary skill in this art to use the superabsorbent polymer
containing herbicidal and insecticidal compositions of Levy either alone or combined with other
ingredients used in lubricants, as lubricant compositions in a process of applying a lubricant
composition to a surface. Indeed, the examiner has the initial burden to establish the factual
foundation for the prima facie case of obviousness, including the evidence establishing why one
of ordinary skill in the art would have combined the references, and only then does the burden
shift to appellant to submit argument in rebuttal. See generally, Lee, supra; Oetiker, supra.
Thus, the examiner must carry the burden of establishing that, prima facie, the polymers of Reick
and/or Lewis are superabsorbent polymers per se as specified in appealed claim 72, and can
absorb greater than about 100 times its weight in water as specified in the remaining appealed
claims before the burden shifts to appellant to establish otherwise. The disclosure of the
superabsorbent polymer with water and oil in the Levy references as noted by the examiner does
not establish that these references are analogous prior art because the Levy references are not
within the field of appellant’s endeavor which is the lubricant arts, and are not reasonably
pertinent to the particular problem of applying lubricants to a surface which appellant is
attempting to solve. See In re Clay, 966 F.2d 656, 23 USPQ2d 1058, 1060-61 (Fed. Cir. 1992).
Thus, we conclude that the examiner has not pointed to some teaching, suggestion or motivation
in the prior art to combine the applied references, and accordingly, we reverse this ground of
rejection.
We summarily affirm the fourth ground of rejection advanced on appeal because
appellant has stated the intention to file a terminal disclaimer to obviate the rejection of appealed
claims 72 through 86, which are all of the appealed claims, under the judicially created doctrine
of obviousness-type double patenting over copending application 08/943,125 (brief, page 4; reply
brief, page 7).
The examiner’s decision is affirmed.
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