Appeal No. 2001-0452
Application 08/073,969
full paragraph (“It is submitted that the Board of Appeals’ reasoning and decision in Paper
No. 33 for rejected claim 37, which forms the basis of the independent claims 38-40 in this
Continued Prosecution Application, is equally applicable to the instant application”). That
reliance is misplaced and the examiner’s argument is flawed because independent claims
38, 39, and 40 before us contain significant limitations not present in previously submitted
claim 37. Independent claim 38, like previously submitted claim 37, requires that the total
content of 3-isothiazolinones is below 8 wt. %, but claim 38 also requires that the claimed
composition contains no more than 10 wt. % isothiazolinone decomposition products. By
the same token, claim 39 requires that the total content of 3-isothiazolinones is below 8
wt. %, but claim 39 also requires that the composition has a stability period of at least 100
days. Claim 40 sets forth all three limitations at the end of the claim, viz., a composition
wherein the total content of 3-isothiazolinones is below 8 wt. % and which contains no more
than 10 wt. % isothiazolinone decomposition products and wherein the composition has a
stability period of at least 100 days.
In a nutshell, the examiner erred by not adequately re-evaluating patentability in light
of the newly presented independent claims. Cf. In re Hedges, 783 F.2d 1038, 1039, 228
USPQ 685, 686 (Fed. Cir. 1986) (“If a prima facie case [of obviousness] is made in the
first instance, and if the applicant comes forward with reasonable rebuttal, whether
buttressed by experiment, prior art references, or argument, the entire merits of the matter
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