Appeal No. 2005-2180 Page 2
Application No. 10/051,417
for that purpose. Further, contrary to Appellants= argument, the subject matter of
claim 2 does not exclude the presence of bolts used to hold the valve cover in place.1
Here again, we recognize that Appellants have not directed us to evidence that
shows the adhesive of Mochizuki is not suitable for the stated purpose.
Regarding the claims of Group III, we select claim 26 as representative. Claim
26 provides that the adhesive have a cohesive strength above 250 psi when
measured according to the stated ASTM D3165-91 4 standard. The Examiner has
determined that Mochizuki discloses an adhesive sealant having a tensile strength of
approximately 568 psi. Mochizuki does not indicate a particular ASTM standard was
used in this determination. The USPTO does not have facilities to perform test.
When the Examiner provides a reference which is reasonably expected to produce
the claimed requirements the burden is shifted to the Appellants to perform the
requisite testing to demonstrate the cited reference does not possess the claimed
property. See In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433-34 (CCPA 1977).
Appellants have offered no comparison data which satisfies this burden.
The Examiner rejected claims 4-5, 7, 12-14 and 22-23 under 35 U.S.C. '103(a)
as obvious over the combined teachings of Mochizuki and Santella. The Examiner
1 The claim language does not prevent the valve cover from having a nut that would receive a
bolt.
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