Appeal No. 2001-0168
Application No. 09/170,790
As pointed out by the examiner, "[t]he claims merely define
a layer of a combination of a polyurethane and ethylene-vinyl
alcohol copolymer without specifying the position of the
copolymer within the layer." Examiner's Answer, page 7.
Moreover, the claims do not specifically recite that the hydrogen
bonding occurs "between a copolymer of ethylene-vinyl alcohol
(EVOH) of the first layer and a thermoplastic polyurethane (TPU)
of a second layer." See Appeal Brief, page 9. Rather, the
claims merely require that hydrogen bonding occur along a segment
of the membrane between the first and second layers.3
Although the initial burden of establishing a prima facie
case of obviousness rests on the examiner, see In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), the
PTO can require an applicant to prove that a prior art product
does not necessarily or inherently possess the characteristics of
the claimed product where the claimed and prior art products are
3 According to appellants' specification, "it is believed
that significant bonding occurs as the result of available
hydrogen molecules being donated by the vinyl alcohol groups of
the ethylene-vinyl alcohol co-polymer along the length of the
laminated membrane and hydroxyl and urethane carbonyl groups, or
simply the available polar groups of aliphatic thermoplastic
urethane." Specification, page 32, lines 6-10 (emphasis added).
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