Appeal 2006-2270
Application 10/478,569
inherency as to the claimed microsphere sizes have not been substantiated as
necessarily described by Spitler. While Appellants’ product claims employ
product-by-process terminology, the Examiner has not even met the lesser
burden of proof usually associated with such a claim format in establishing a
lack of novelty of any of Appellants’ product claims. This is so because the
Examiner has not fairly explained how a product made by the process of any
of Appellants’ claims, for example claim 1, would result in a product that
would reasonably be expected to read on any product that is fully described
in Spitler.
The Examiner (Answer 5 and 6) notes “inconsistencies” in Spitler
respecting the weight percent terminology employed therein, as raised by
Appellants. However, the Examiner does not fairly explain how Spitler
nonetheless describes part by weight amounts for the ingredients of the foam
product thereof that would negate the novelty of any of the rejected claims.
In this regard, we note that the “high loads of microspheres” attributed to
Spitler’s foam by the Examiner (Answer 6) has not been shown to serve as
an anticipation of Appellants’ foam made with any of the claimed ranges of
foam ingredients. In this regard, the Examiner has not detailed where Spitler
describes a particular foam product that necessarily has a relative amount
and a size of microspheres that any of the appealed claims would read on.
See, e.g., Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 998-99, 78
USPQ2d 1417, 1423 (Fed. Cir. 2006).
For reasons set forth above and for additional reasons as set forth in
Appellants’ Briefs, a prima facie case of anticipation has not been presented
by the Examiner for any of the appealed claims before us. It follows that we
will not sustain the Examiner’s lack of novelty rejection on this record.
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