Ex parte AMEY - Page 5




          Appeal No. 1996-4115                                                        
          Application No. 08/183,273                                                  

          Devore recognizes that polyamide-epichlorohydrin resins                     
          emit harmful chlorinated compounds into the water system of                 
          pulp and paper mills.  See column 1, lines 41-44.  However, we              
          find that Devore solves the problem by using an                             
          epichlorohydrin/amine equivalent of about 0.6 to about 0.8,                 
          i.e., a deficiency of epichlorohydrin.  Hence the reaction                  
          continues until all the epichlorohydrin has reacted.  See                   
          column 2, lines 60-64 and column 4, lines 50-57.  Accordingly,              
          Devore recognizes that excess epichlorohydrin is undesirable,               
          but suggests its removal by decreasing the ratio of mole                    
          equivalents present.                                                        
          In viewing the teachings of the references as a whole,                      
          we conclude that the examiner has not explained why it would                
          have been obvious to one of ordinary skill in the art to have               
          removed epichlorohydrin from a polyamide-epichlorohydrin                    
          resin, when no such suggestion is found in the prior art.                   
          The examiner must show reasons that the skilled artisan                     
          confronted with the same problems as the inventor and with no               
          knowledge of the claimed invention, would select the elements               
          from the cited prior art references for combination in the                  
          manner claimed.  We determine that there is no reason,                      

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