Appeal 2006-1080
Application 10/109,343
or suggest a surface of coating of less than 10 mil thickness and at least 10%
penetration of the pitch into the porous board or fibrous material. See In re
Kahn, 441 F.3d 977, 985-86, 78 U.S.P.Q. 1329, 1335 (Fed. Cir. 2006) (an
appellant may overcome a rejection by showing insufficient evidence of
prima facie obviousness); In re Piasecki, 745 F.2d 1468, 1472, 223 U.S.P.Q.
785, 788, (Fed. Cir. 1984) (noting that the prima facie case requires that the
examiner initially produce evidence sufficient to support a ruling of
obviousness and only then does the burden shift to the applicant). The
Examiner concedes that Jackson does not specify the amount of penetration
into his substrate (Answer 3), but maintains that coal tar pitch inherently
meets the claim limitation of “at least a portion of said pitch penetrates into
said porous board or fibrous material” because it is known in the art to have
a relatively “high penetration value” when applied to most porous substrates
(Answer 4 & 6 (citing Rajalingam, col. 1, ll. 35-48) & 10).3 The Examiner
also takes the position that it would have been obvious to one of ordinary
skill in the art at the time the invention was made to optimize the amount of
coal tar pitch that penetrates into the substrate in order to optimize the bond
between Jackson’s coating and the substrate (Answer 3-4 & 6). The
Examiner bases this conclusion on his finding that Stern teaches that “the
3 The referenced portion of Rajalingam states:
Due to the low cost of bituminous material, its relatively high
penetration value when applied to most porous surfaces,
weather-resistant nature, and impermeability to water,
bituminous material has traditionally been used as a main
component of protective films, adhesive binders in asphalt
emulsions (M. Lalanne and J. Serfass, U.S. Pat. No. 4,724,245),
12
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