Appeal No. 2007-1111 Page 7
Application No. 10/126,804
protection . . . .” Id. We note, however, that claim 1 does not require the
container to exhibit any particular amount of color protection. To the contrary,
claim 1 simply requires that the container be substantially opaque. In our
opinion, the combination of references relied upon by the examiner teaches a
container within the scope of appellants’ claimed invention. Accordingly we are
not persuaded by appellants’ assertion and evidence which is not commensurate
in scope with claim 1.
On reflection we find no error in the examiner’s prima facie case of
obviousness. Accordingly, the burden of coming forward with evidence or
argument was properly shifted to appellant. In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). For the reasons set forth above,
appellants failed to carry their burden. Therefore, we affirm the rejection of claim
1 under 35 U.S.C. § 103 as being unpatentable over the combination of ‘653,
Wilcox, Akao and Keller. Claims 2-9, 15-17, 19-23, 29 and 30 fall together with
claim 1.
The combination of ‘653, Wilcox, Akao, Keller and appellants’ admitted prior art:
Claims 13, 14, 27 and 28 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of ‘653, Wilcox, Akao, Keller and appellants’
admitted prior art. As set forth above, we limit our discussion to claim 13. The
examiner relies on the combination of ‘653, Wilcox, Akao, and Keller as set forth
above. Answer, page 7. The examiner relies on appellants’ admitted prior art to
teach “that it was known to make dental adhesives with a color changeable dye
for changing from a distinctive color upon curing to one essentially ‘colorless’ for
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