Appeal No. 2001-0452
Application 08/073,969
are to be reweighed.”) On this record, the examiner does not explain how Segall
constitutes a technical anticipation of independent claims 38, 39, and 40. Nor does the
examiner explain how the disclosure of Segall alone, or the combined disclosures of Segall
and Hart, would have suggested the subject matter of claims 38, 39, or 40, taking into
account all of the limitations recited in those claims.
The examiner’s decision, rejecting claims 27 through 31 and 38 through 67 under
35 U.S.C. § 103(a), is reversed.
The examiner also sets forth non-prior art rejections in this case. Claims 38 and 40
stand rejected under 35 U.S.C. § 112, first paragraph, as based on a non-enabling
disclosure in view of the expression “which contains no more than 10 wt. % isothiazolinone
decomposition products.” Those same claims stand rejected under
35 U.S.C. § 112, second paragraph, as not particularly pointing out and distinctly claiming
the subject matter which applicants regard as their invention in view of the same
expression.1 In our judgment, those rejections are untenable for the reasons succinctly
stated in the Appeal Brief (Paper No. 46), pages 13 through 15.
The examiner’s decision, rejecting claims 38 and 40 under 35 U.S.C. § 112, first
and second paragraphs, is reversed.
1 We note in passing the rejection, initially set forth, of claims 45, 49, 54, 58, 63, and 67
under 35 U.S.C. § 112, first paragraph, as based on a non-enabling disclosure in view of
the expression “and a mixture of NaN03 and KNO3” (Examiner’s Answer, page 4, first full
paragraph). However, it appears that the examiner subsequently withdrew that rejection
(Examiner’s Answer, page 11, first full paragraph), and we find it unnecessary to discuss it
further.
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