Appeal Number: 2007-2665
Application No. 11/216,805
claimed subject matter is unpatentable over the cited prior art. Accordingly, we
will sustain the Examiner’s rejection for the reasons set forth in the Answer.1
The Examiner has found that Genske discloses a multiplayer film which is a
blend of 10 to 65 wt% of polyisobutylene and 35 to 90 wt% of a propylene
copolymer. The propylene copolymer comprises 70-98 mole percent of propylene
and 2-30 mole percent of ethylene (Answer 4-5). The Examiner determined that in
view of the substantially identity between the first layer of the film of Genske and
the first polymer of claim 1, there is a reasonable basis to believe that the claimed
machine direction tear, haze, 45° gloss, and dart value properties are inherently
possessed by Genske’s film (Answer 5).
Appellants have not disputed the Examiner's determination that the
propylene-based first layer of Genske appears to be identical or substantially
identical to the claimed first polymer (Answer 4-8). Rather, Appellants argue that
the claimed machine direction tear and dart value properties are not inherently
possessed by Genske’s film (Br 9-10). Indeed, the Examiner has admitted that
Genske does not expressly disclose the claimed machine direction tear and dart
value properties. However, mere recitation of a property or characteristic not
disclosed by the prior art does not necessarily confer patentability to a composition
or a method of using that composition. See In re Skoner, 517 F.2d 947, 950,
186 USPQ 80, 82 (CCPA 1975). Where, as here, the Examiner has established a
reasonable basis that the property or characteristic recited in the claims would have
been inherent in the prior art product, the burden of proof properly shifts to
Appellants to show that this characteristic or property is not possessed by the prior
1 Appellants have not presented separate arguments for the rejected claims. Thus,
the claims stand or fall together. We will limit our discussion to claim 1.
3
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