Appeal No. 2002-1622 Page 5
Application No. 08/735,836
Once the Examiner presented a reasonable basis to believe that the mixture of Birkholz is
heterogeneous, the burden shifted to Appellants to prove that the mixture of Birkholz is not
heterogeneous and thus would not have the characteristics of an immiscible mixture. See In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Appellants argue that the Leir
Affidavit establishes that the PVP is miscible with the copolymers of the type disclosed in
Birkholz (Brief at 9). However, we agree with the Examiner that the Leir Affidavit presents no
objective evidence showing a patentable difference between the mixtures. Leir’s statement that
he believes these polymers are miscible does not overcome the evidence contained in Birkholz
tending to show that PVP is dispersed in the copolymer. Moreover, in ¶ 9, the Leir Affidavit
states that PVP is not a hot melt processable polymer as it tends to degrade before it melts. This
statement supports a finding that Birkholz disperses PVP in solid particle form just as is
presumably done with calcium carbonate. Solid PVP would be immiscible in the copolymer as
required by the claim.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1, 3, 6, and 21. In fact, as Tushaus is used as extrinsic
evidence to show what is described by Birkholz and not used to modify the teachings of
Birkholz, the rejection could have been made under 35 U.S.C. § 102(e). See In re Baxter
Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1284 (Fed. Cir.1991)(extrinsic
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007