Appeal Number: 2007-2665
Application No. 11/216,805
art. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657-58 (Fed. Cir. 1990). However,
Appellants have failed to meet their burden to establish that the claimed
characteristics are not possessed by the Genske reference.
Appellants argue that the data of Table 13-3 of the Specification and the
Declaration of Dr. Li-Min Tau establish that, in fact, the monomer composition, by
itself, does not predict the properties of a film made from the monomers (Br. 10).
The data presented in the Specification and the opinion presented in the
Declaration are not persuasive. The data presented in Table 13-3 purports to
compare examples that fall within the scope of the presently claimed invention to
“various commercially or experimentally available Ziegler-Natta catalyzed random
polypropylene resins” (Specification 85). However, there is no evidence that these
“commercially or experimentally available” resins are comparable to the prior art
product, i.e, Genske’s first layer. Nor has Dr. Tau (declarant) repeated the
examples of Genske to determine whether Genske’s first layer does not necessarily
possess the claimed properties. Dr. Tau’s statement that direct comparative
evidence of Genske’s film cannot be reported because “Genske does not provide
information regarding the manner in which the polypropylene used in the first
layer of his multilayer film is prepared” is not supported by any objective evidence
(Declaration ¶ 7).2 In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir.
2 To the extent that Dr. Tau is asserting that the Genske reference is nonenabling,
we do not agree. The disclosure of Genske is equivalent to the disclosure of the
present Specification and claimed invention. The present Specification, page 50,
states “[t]he polymers, including the P* [propylene] and P/E [propylene/ethylene]
polymers, used in the practice of this invention can be made by any convenient
process.” As such, Appellants’ claimed invention does not specify specific
processing conditions for producing the polymer films. The Declarant, who is the
named inventor, is at least a person of ordinary skill in the art. As such, the
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