Appeal No. 2001-0825
Application No. 08/952,566
We note that the initial burden of presenting a prima facie
case obviousness rest on the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
We determine that the examiner’s rejection does not
establish a prima facie case of obviousness for the following
reasons.
Component (a) of claim 1 requires the following:
(a) from 20 to 70% by weight of a fluorine
containing copolymer comprising the result of
copolymerizing
at least one fluoro-olefin monomer,
at least 10% by weight of one or more hydroxy
group containing vinyl monomer having at least four
atoms between a vinyl group and a hydroxy group, and a
terminal hydroxy group, the percent by weight based on
the total weight of copolymer (a), and
one or more other vinyl monomers,
the fluorine containing copolymer (a) having a
solubility parameter from 9.0 to 10.5 and a hydroxy
group value from 620 to 150 mgKOH/g
Here, the examiner refers to the abstract and columns 2-5
of Sawada, and also states that copolymer (A) disclosed in
Sawada, in column 8 beginning at line 14, has a solubility
parameter value of 9.8, which falls within the values claimed by
appellants. (answer, page 4).
However, we find that the examiner’s position does not
explain how the fluorine containing copolymer disclosed in
Sawada satisfies the requirements of appellants’ claimed
component (a), reproduced above. Although we observe that the
fluorine containing copolymer in column 8, beginning at line 15,
of Sawada has a hydroxyl value of 52 and solubility parameter
value of 8.9, the examiner does not explain how this copolymer
is a result of copolymerizing (1) at least one fluoro olefin
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