Appeal 2007-1389
Application 10/790,898
composition disclosed as useful by Appellants. Appellants argue that the
Examiner has not supported a finding that “such a broad class of materials
all have this property,” i.e., the claimed stability property (Reply Br. 4). But
nor does the Specification provide any evidence that the broad class does not
have the claimed property. Appellants’ Specification, in fact, does not
particularly limit the identity of the radiation curable composition (FF 4) and
the radiation curable compositions disclosed by Lu are the same or similar to
those exemplified in the Specification (FF 7). Therefore, there is a
reasonable basis to conclude the claimed property is inherently present in
Lu’s composite such that the burden is shifted to Appellants to show that the
property is, in fact, not present. Spada, 911 F.2d at 708, 15 USPQ2d at
1657; Best, 562 F.2d at 1255, 195 USPQ at 433. Appellants provide no
objective evidence showing, in fact, the composite of Lu does not have the
claimed property.
III. CONCLUSION
We conclude that the Examiner reasonably supported the finding that
Lu describes a composite article having “large scale predictable dimensional
stability” as claimed. Therefore, we find a preponderance of the evidence
supports the Examiner’s finding of anticipation.
With respect to the rejection of dependent claims 12 and 23-26 under
35 U.S.C. § 103(a) as unpatentable over Lu, Appellants advance no
additional arguments. Therefore, we sustain the rejection of 12 and 23-26
for the reasons presented above.
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