Appeal No. 2004-0117
Application 09/779,312
but the examiner has not established that a need to prevent
contamination or partial removal of shoe polish was common
knowledge generally available to one of ordinary skill in the
art.
The examiner argues that “[b]low molding the container and
injection molding the lid do not structurally limit the final
product. Thus, the product-by-process does not patentably
distinguish the claimed product from the product of the prior
art” (answer, page 4). The examiner has the initial burden of
establishing a prima facie case of unpatentability by providing
evidence or reasoning which indicates that the appellants’
injection blow molded thermoplastic container and Fritz’s
polymeric container are identical or substantially identical, see
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977), or that one of ordinary skill in the art would have
been led by the references to form Fritz’s container such that it
is the same or substantially the same as an injection blow molded
thermoplastic container. The examiner has not carried this
burden. Moreover, the examiner has not explained why the applied
references would have fairly suggested, to one of ordinary skill
in the art, replacing Fritz’s metal lid with the injection molded
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