Appeal 2006-2352
Application 10/065,436
acknowledged that Tamiya (alone or taken with Jennergren) does not
explicitly teach a moisture absorption capability of about 10 to about 30
volume percent as recited in independent appealed claims 16 and 28
(Answer 11). The Examiner maintains a presumption of inherency and/or
obviousness for that claim limitation. Id. The Examiner finds support for
that asserted presumption based on an alleged “use of like materials (i.e., a
hollow filament consisting essentially polyethylene terephthalate which is
used for liquid absorbing materials indicating a level of moisture
absorptivity) which would result in the claimed property.” Id. Regarding
independent appealed claims 29, 30, and 37, the Examiner asserts that
Tamiya’s “hollow section provides ‘sufficient openings to substantially fill
with liquid’” (Answer 8 and 9). However, the Examiner has not established
where Tamiya describes the core-sheath fibers/filaments as providing
absorbent properties, as opposed to the filaments being used in articles,
which articles (diapers) are attributed absorbency characteristics.
In essence, the Examiner takes the position that it is appropriate to
shift the burden to Appellants to establish that the applied references do not
possess the variously claimed filament absorption capability, whether that
capability is recited as a volume percent range (independent claims 16 and
28) or is recited as a number of openings sufficient to permit the filament to
substantially fill with water (independent claims 29, 30, and 37). Indeed, it
is well-settled that an Examiner may shift the burden to Appellants by
showing how a prior art structure substantially corresponds to an Appellants’
structure such that it would be reasonable to presume that the prior art
structure would also possess a claimed function employing an inherency
theory. See In re Schreiber, 128 F.3d at 1477, 44 USPQ2d at 1432.
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