Appeal No. 2002-0148
Application No. 09/104,675
Thus, the burden of showing that the material of Bohan, made
with its preferred lower amount of masking coupler, would not be
within the claimed gamma ratios, falls to the appellant. “[W]hen
the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705,
708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The examiner has put forth sufficient facts to reasonably
support a position that the preferred embodiment contains the
claimed gamma ratios. A prima facie case of obviousness has
therefore been established.
Evidence
To counter the prima facie case of obviousness, the
appellants point to declaration evidence and examples contained
within the specification. More specifically, the appellants
state that:
...it has been pointed out that the examples of the instant
specification as well as the declaration of Szajewski et al.
show that this is not true [realization of the gamma ratios
by Bohan]. (Appeal Brief, page 9, lines 11-13). “Further,
it has been shown by the extensive examples in this
application that are similar to Bohan et al. and by the
declaration of Dr. Szajewski that the invention as claimed
is not inherently performed by Bohan et al.” (Appeal Brief,
page 9, line 24-page 10, line 1).
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007