Appeal No. 95-2142
Application No. 07/996,423
1. Claims 21-41 stand rejected under 35 U.S.C. § 103 as unpatentable over the combination of
2 3 4
Yoon, Magagnini and Pielartzik; and
2. Claims 21 and 32 stand rejected under 35 U.S.C. § 112, ¶ 2, as indefinite.
We vacate and remand the § 103 rejection and reverse the rejection under § 112.
The rejection under 35 U.S.C. § 103
In general terms, the claimed subject matter is a method of producing a poly (ester-amide) fiber
by preparing a specified poly (ester-amide) composition, heating the composition until it melts, and spinning
the melt to form fibers. On this record, the composition and the fibers have not been asserted to lack
novelty and/or to have been obvious. Indeed, the poly (ester-amide) composition and fibers are patented
in U.S. Patent 5,204,403, which issued from the parent of the application involved in this appeal. On this
record the steps of the process, i.e., preparing a poly (ester-amide), heating to melt the composition and
spinning the melt to make fibers, is old. The difference between the old and conventional process and the
claimed subject matter is the specific starting poly (ester-amide) composition and fibers made from that
composition. None of the references is asserted to suggest the specific combination of ingredients making
up the poly (ester-amide) composition.
Not surprisingly, the examiner’s rejection is based upon In re Durden, 763 F.2d 1406, 226 USPQ
359 (Fed. Cir. 1985). The examiner’s position can be understood from the following excerpt from the
Examiner’s Answer:
[A]pplicants[’] claims are not directed to a method of using the polymer, but are
directed to the method of making a fiber from [a] starting polymer [which] is novel
and unobvious which does appear to be analogous to In re Durden, i.e. a method
2 U.S. Patent No. 4,562,244 issued December 31, 1985.
3 U.S. Patent No. 4,833,229 issued May 23, 1989.
4 U.S. Patent No. 5,030,730 issued July 9, 1991 (filed September 5, 1989).
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