Appeal 2006-2729
Application 10/193,363
essentially separately condensed solid particles which are substantially
suspended in a distinct dispersing medium” (id.; original emphasis deleted).
The Examiner responds that the “nanofluid does not exclude
dispersions,” citing Specification at page 10, ll. 20 et seq. (Answer 17). The
Examiner finds Hendrickson discloses using ultrafine nonelemental pigment
particles of a dye in perfluoropolyether solvents to form compositions which
“include nanofluids including the particles and the dispersing medium
having an affinity for said particles with a nanometer sizes of at least 1 to 10
nanometers” (id.). Appellants reply the claimed nanofluids obtained by the
process of claim 15 comprise precipitated nanoscale material particles which
are composite particles individually comprised of both the functional
material and the surfactant material and thus, are not the material of
Hendrickson (Reply Br. 8-9).
The issues in this appeal are whether the Examiner has carried the
burden of establishing a prima facie case in each of the grounds of rejection
advanced on appeal.
We first consider the ground of rejection under § 112, second
paragraph. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971). The initial burden of establishing a prima facie case on any ground
under this statutory provision rests with the Examiner. See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (citing In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (“As
discussed in In re Piasecki, the examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). The Examiner must establish that when the language of
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013