Appeal 2007-2863
Application 10/934,507
1 Saito cures the prepolymer with polyoxytetramethylene glycol and
2 xylylenediamine.
3 The diamine is 4 wt. % of the polytetramethylene glycol and there is
4 no polytetramethylene glycol present in the first prepolymer.
5 When a reference describes all the limitation of a claim except for a
6 property (in this case, hardness and tensile strength), and the Examiner
7 cannot determine if the property is inherent, the burden is shifted to the
8 applicant to establish patentability. The Examiner cited In re Fitzgerald,
9 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980), as supporting burden-
10 shifting.
11
12 The Shimoma Rule 132 declaration
13 After the final rejection, Asahi Glass filed a Rule 132 declaration of
14 named inventor Hitoshi Shimoma.
15 Shimoma alleges that the claimed subject matter and the resin of Saito
16 Example 1 are "different." Declaration, ¶ 3.
17 In an effort to provide some scientific underpinning for his allegation,
18 Shimoma had an experiment conducted under his supervision. Declaration,
19 ¶ 4.
20 In due course the Examiner would criticize the experimental work as
21 not representing that of Saito Example 1. Examiner's Answer, page 4.
22 Shimoma mentions use of 2,4-tolylene diisocyante [TDI], whereas
23 Saito Example 1 uses MDI: [4,4'-diphenylmethane diisocyante]. There is
24 no credible testimony to support a finding, one way or the other, whether the
8
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