Appeal No. 2001-0742
Application 09/128,912
The examiner urges that “[o]nce a reference teaching
product appear[s] to be substantially identical . . . and the
Examiner presents evidence or reasoning tending to show
inherency, the burden shifts to the Applicant to show an
unobvious difference.” Examiner’s Answer, page 11 (quoting MPEP
§ 2112). Although the examiner’s statement of the law is
correct, we agree with appellants that the examiner has not
presented the requisite evidence or reasoning tending to show
inherency. The lack of specific examples of crosslinked films
comprising polymer latex compositions falling within the ranges
cited in appellants’ claim 8, coupled with appellants’ evidence
demonstrating that the properties of crosslinked films result
from numerous variables other than composition, demonstrate that
the missing descriptive material of tensile strength, elongation
and/or modulus recited in claim 8 is simply not “necessarily
present” in the cited references.
Accordingly, the rejections under 35 U.S.C. § 102(b)
(GROUNDS OF REJECTION 1-4) are reversed.
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