Appeal No. 2003-1801
Application 09/559,347
challenging the appellants to prove the contrary.
For at least two reasons, the examiner has improperly
shifted to the appellants the burden of submitting such proof.
First, as correctly argued by the appellants, the examiner’s
inherency and burden-shifting position was improper in the first
instance since it related to a completely hypothetical recording
medium. The authorities cited by the examiner in support of his
position involve actual, not hypothetical, prior art products,
and it is indisputable that the prior art recording medium of
Ross does not inherently possess a lithium-migrating prevention
property (i.e., because patentee’s substrate does not contain
lithium). Second, the examiner’s aforementioned position is
improper with respect to a texturized layer of the type taught by
Ross since there is absolutely no evidence in the record before
us which supports a determination that such a texturized layer
would be capable of preventing lithium migration.
Under the circumstances discussed above, we determine
that none of the § 103 rejections advanced by the examiner on
this appeal can be sustained.
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