Appeal 2007-2851
Application 10/308,702
thermoplastic polymer base layer and an outer layer comprising a
thermoplastic polymer having a melting point of not more than 230°F.
When, as here, a claimed product reasonably appears to be
substantially the same as a product disclosed by the prior art, the burden is
on the applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In the
present case, Appellants have proffered a Declaration under 37 C.F.R.
§ 1.132 by Dr. Lu, one of the present inventors, as evidence that “[t]he
recitation of ‘coextruded’ in the rejected claims necessarily requires a
structural distinction, at least at the micro-structure level, that distinguishes
the claimed film structures from the structures of the prior art” (Declaration
1, penultimate para.). The Declarant states that there are differences in the
adhesion profile and the film layer uniformity profile between coextruded
and non-coextruded film structures. The differences in the adhesion profiles
are due to the presence or absence of stress-induced crystallization, air at the
layer interface, and polymer chain entanglement. The difference in film
layer uniformity profile is caused by the difference in the heat histories of
the layers.
Upon thorough review of Appellants’ Declaration, we are in
agreement with the Examiner that the Declaration evidence falls far short of
establishing a patentable structural distinction between coextruded films
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