Appeal No. 95-1484
Application 08/070,650
which produce reticulated cellulose product as herein
claimed is unpredictable in the art . . . .
The examiner added (Ans., p. 11), “[O]ne of skill would be
hard pressed to identify the intended microorganisms for use
in the claimed method . . . .” The complexity of the
examiner’s dilemma is best seen in his attempts to compare
appellants’ process steps to the process steps the prior art
describes. For example, the examiner could not distinguish
the intermittent agitation purportedly taught by Ring from the
“substantially continuous agitation” (Claim 49) required for
appellants’ claimed process (Ans., p. 17, first para.). Note
the examiner’s aside that the cellulose product Ring produces
“appear[s] to correspond to the claimed reticulated cellulose”
(Ans., p. 17, second para.). It is not and apparently never
has been clear to the examiner what the term “reticulated
cellulose” means (Ans., p. 18, first para.):
No data has actually been submitted to distinguish
“reticulated cellulose” from the pellicle formation of
Ring, and the other references, wherein the Acetobacter
microorganisms are cultured under conditions of
agitation.
Irrespective of his belief that persons skilled in the
art would have been left to guess whether subject matter falls
within the scope of appellants’ claims, the examiner failed to
directly address the uncertainty of the scope of the claims
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