Appeal 2007-1932
Application 11/066,550
examiner to produce evidence sufficient to support a ruling of obviousness
in the first instance. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 787-788 (Fed. Cir. 1984). “If examination at the initial stage does not
produce a prima facie case of unpatentability, then without more the
applicant is entitled to grant of the patent.” Oetiker, 977 F.2d at 1445, 24
USPQ2d at 1444. The burden is on Applicant to demonstrate reversible
error by the Examiner.
Zschieschang restricts its arguments to the patentability of claim 1 and
argues that remaining claims 2–11 fall with claim 1. (Br. at 14.)
Accordingly, we shall restrict our attention to claim 1. The Examiner finds
that Okazaki describes a process meeting all the limitations of the claimed
subject matter but for the organic conductor in the ink. According to the
Examiner, Duthaler provides the teachings that make up this deficit. The
Examiner also concedes that an express description of the hydrophobic and
hydrophilic character of interfaces is also absent from Okazaki, but argues
that these properties would have been obvious from the general teachings of
Okazaki, because the advantages of using areas with different absorption
characteristics was well known in the printing art, citing Teng and Choy for
support of the last proposition. (Answer at 4.)
As Zschieschang points out (Br. at 10, 12), Okazaki is silent as to the
hydrophobic and hydrophilic character of any of the interfaces recited in
intaglio printing processes generally corresponding to the process of claim 1.
The Examiner's citation of Okazaki's discussion of hydrophobic and
hydrophilic parts of plates, and of the hydrophobic properties of inks and
substrates is, on the present record, misdirected. As Zschieschang further
notes (Br. at the paragraph bridging 11-12), Okazaki discusses those
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