Appeal No. 94-3726
Application 07/978,531
1987). “Where the legal conclusion of obviousness is not
supported by facts it cannot stand.” See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). For the
foregoing reasons, we conclude that the examiner has failed to
establish a sufficient factual basis to support a prima facie
case of obviousness. Accordingly, the rejection of claims 1
through 11 under U.S.C. § 103 as unpatentable over Tirpak, Rei
‘080, Rei ‘657, and Yeager is reversed.
C. Rejections Pursuant to 37 CFR § 1.196(b)
(1) The Rejection Under § 112, Fourth Paragraph
Claim 10 is rejected under the fourth paragraph of 35
U.S.C. § 112 because this dependent claim contains a reference
to a claim previously set forth (claim 1) but fails to specify
a further limitation of the subject matter claimed. Claim 10
specifies that the cooling of step (c) in claim 1 is carried
out in the presence of continuous stirring. However, claim 1,
step (c), “cooling said hot dispersion under continuous
stirring”. Thus claim 10 does not further limit the subject
matter claimed in claim 1.
(2) The Rejection Under § 102(e)
11
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