Appeal No. 2005-0836 Page 10
Application No. 09/880,292
Elste that there was a reason or motivation to use a solvent in asphalt-in-water emulsions
(Answer, pp. 5-6). That is enough to establish a prima facie case of obviousness in this case.
See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992); In re Kemps,
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
We conclude that the Examiner established a prima facie case of obviousness with
respect to claims 6 and 24 which has not been sufficiently rebutted by Appellants.
Xiao Declaration
Appellants argue that even if a case of prima facie obviousness was made out, the Xiao
Declaration rebuts it (Brief, p. 10). Appellants state that the Xiao Declaration shows by
selection of clay as the emulsifier for the asphalt-in-water emulsion and the selection of
nonionic surfactant in amounts of 0.1 wt.% or greater, there is a significant impact on the ability
of Appellants’ invention to solve the problem of how to make a sound dampening coating that
survives intact in automobile paint and primer ovens (Brief, p. 10). Appellants point out that the
prior art relied upon by the Examiner does not indicate that the presence or amount of surfactant
has the impact shown by the data on the properties of the coating (Brief, p. 11). Appellants
further point out that there is no teaching that the selection of clay emulsified systems has a
positive impact on the ability of the coating to withstand the conditions of paint and primer
ovens (Brief, p. 11). Appellants then state that “[a]bsent a teaching in the art of the selection of
these parameters and the specific impact [of] such selections on the properties of the coatings,
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