Appeal No. 2005-1907 Page 10
Application No. 09/909,898
of the nature as claimed resulting in additional unobvious improvements, as note [sic] page 14,
lines 9-18 of the specification. Such irradiation additionally thus is unobvious even considering
the teachings of these further references.” (Brief, pp. 7-8). Looking to the specification, page 14,
lines 9-18 indicate that the membrane-supporting material is irradiated “to secure adhesion
between the porous substrate and the membrane, from the view point of the electrical resistance,
mechanical strength and long term durability of the obtainable reinforced membrane.” There is
no indication in the specification that the improvements would have been unexpected by, or
otherwise unobvious to, one of ordinary skill in the art. The Examiner has established that
irradiation was conventionally performed on polymer surfaces for various effects including to
promote adhesion. Those of ordinary skill in the art would have understood the applicability of
the those teachings to the polymeric membrane-supporting material of MacDonald.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claim 10.
Appellants argue that they have rebutted any prima facie case of obviousness based on
comparisons set forth in the specification (Brief, p. 7; Reply Brief, pp. 3-4). These discussions
seem to be directed to the rejection of the product claims, a rejection which we reverse. In so far
as these discussions relate to the process claims 5-10, we conclude that the totality of the
evidence weighs in favor of a conclusion of obviousness. Once a prima facie case of
obviousness is established, the burden of coming forward with evidence and argument in rebuttal
is shifted to appellants. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
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