Appeal No. 1998-1006
Application No. 08/499079
II. The Rejection under 35 U.S.C. § 102(b) as anticipated
by, or in the alternative under 35 U.S.C. § 103(a) for
obviousness over Moss or British Celanese.
Appellants’ claim 44 is a process claim directed to a
method of tackifying a hot melt thermoplastic composition.
[emphasis added] The method comprises adding an effective
tackifying amount of a polyester material comprising
greater than 5 mole% of lactic acid having a molecular
weight (Mn) less than about 30,000 grams per mole and Tg
less than 110°C, to a thermoplastic.
Before reaching the merits of the art rejections, we
note that with regard to the anticipation rejection, to
constitute anticipation of the claimed invention, the
examiner’s burden is to apply a single prior art reference
that discloses each and every material element of the
claim. In re Marshall, 578 F.2d 301, 304, 198 USPQ 344,
346 (CCPA 1978). With regard to the obviousness rejection,
the examiner bears the initial burden of factually
supporting a prima facie conclusion of obviousness. In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984).
The issues are whether Moss and British Celanese each
(1) discloses, or (2) teaches or suggests, a method of
tackifying, involving the step of adding an effective,
tackifying amount of polyester material comprising greater
than 5 mole% of lactic acid having a molecular weight (Mn)
less than about 30,000 grams per mole and Tg less than
110°C, to a thermoplastic.
Appellants argue that their claimed invention is
directed to a method of tackifying a hot melt thermoplastic
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