Appeal 2007-0504
Application 10/700,078
From the foregoing and the Examiner’s rationale on pages 3 and 4 of
the Answer, the Examiner has established a prima facie case that Friel’s
aqueous coating composition appears to be the same as Appellants’ claimed
composition such that Friel’s composition anticipates or, in the alternative,
renders obvious Appellants’ aqueous coating composition. Marosi,
710 F.2d at 803, 218 USPQ at 292. Accordingly, the burden has shifted to
Appellants to come forward with evidence establishing an unobvious
difference between the claimed product and Friel’s aqueous coating
composition to rebut the Examiner’s prima facie case. Id.
Attempting to satisfy their burden, Appellants filed a Declaration of
Dr. Matthew S. Gebhard (Gebhard Declaration) on November 15, 2005 with
their response to the final Office Action of September 15, 2005. The
Examiner considered the Gebhard Declaration and found it to be not
persuasive because it was based on the opinion of Dr. Gebhard, not factual
evidence (Answer 5-6).
A copy of the Gebhard Declaration is filed with the Brief in the
“Evidence Appendix.” The Declaration indicates that, in Dr. Gebhard’s
opinion, the amount of rheology modifier does not affect the scrub resistance
of the aqueous coating composition (Gebhard Declaration 2). However, the
Gebhard Declaration fails to rebut the Examiner’s prima facie case of either
anticipation or obviousness. Specifically, the Gebhard Declaration fails to
establish that there is any difference, much less an unobvious difference,
between Friel’s aqueous coating composition and Appellants’ claimed
aqueous coating composition. Marosi, 710 F.2d at 803, 218 USPQ at 292.
Appellants further attempt to satisfy their burden by relying on Table
4.1 on page 20 of their Specification (Br. 5). According to Appellants, Table
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013