Appeal No. 2004-2210 Page 8
Application No. 09/374,117
that the film is breathable. A laminate including the film had a hydrohead of 110 cm, thus
providing evidence that the film provides a barrier to liquids, blood and bodily fluids, and
microorganisms. The laminate had a peel strength of 161 grams indicating that the film layers
were adhesive to each other.
While Appellant claims the multilayer film in terms of functions and properties not
directly expressed in McCormack’s examples, that does not foreclose a finding of anticipation.
If the claimed functions and properties are inherently possessed by any of the films exemplified
by McCormack, the claims are anticipated. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430,
433-34 (CCPA 1977). We note that the PTO has no mechanism in which to manufacture and
test the films of McCormack to verify that the films are the same or substantially the same.
Therefore, it is eminently fair and acceptable to shift the burden to Appellant and require them to
prove that the subject matter shown to be in the prior art does not, in fact, possess the properties
they are relying upon for patentability. Id. This is particularly true, where, as here, it appears
that the reference and the claims are describing films developed within the same corporation, i.e.,
Kimberly-Clark Worldwide. Appellant is in a better position to obtain the prior art products and
make the required comparisons than is the PTO. Id.
Upon further prosecution, the Examiner should review the examples of McCormack and
determine whether there is a reasonable basis to believe that the films of any of the examples
meet the requirements of any of the claims and revise the rejection as appropriate. See Best, 562
F.2d at 1254, 195 USPQ at 433-34 (Before the burden can be shifted to the applicant, the
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