Appeal No. 2005-1907 Page 12
Application No. 09/909,898
that has improved heat durability (Tomoi, col. 3, ll. 8-51). With respect to claim 1, it would
appear that the substantially uniform structure required due to the “mixing substantially
uniformly” limitation would be inherently present in the product resulting from the process of
MacDonald because MacDonald mixes the functional monomer with the thermoplastic polymer
having no ion exchange groups just as done by Appellants. The reasonableness of this
conclusion lies in the identity of the process conditions used to form the claimed and prior art
products and of the other shared properties of these products. Under these circumstances, it is
eminently fair and acceptable to shift the burden to Appellants 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. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 432-33 (CCPA
1977).
The Examiner should determine the patentability of all the claims in light of the above
analysis applying additional evidence of unpatentability as needed.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-12 under 35 U.S.C.
§ 103(a) is affirmed-in-part and the application remanded to the Examiner for further
consideration of a new ground of rejection.
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