Appeal No. 1998-1304
Application 08/444,534
(Garratt).2 For the reasons pointed out by appellants in the brief, the examiner has failed to make out a
prima facie case of anticipation and of obviousness. We add the following for emphasis.
The dispositive consideration in this appeal is the interpretation to be made of appealed claim 1.
We find that, when considered in light of the written description in the specification as interpreted by one
of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997), the plain language of appealed claim 1 specifies that the claimed composition
comprise at least “acrylated chlorinated rubber containing acrylic ester functional groups,” that is, “an
acrylated, chlorinated rubber containing acrylic functionality.” We note that claim 1 was first amended
to so read, but appellants further amended the claim to recite “acrylic ester functionality” in the
amendment of July 1, 1996 (Paper No. 16) in order to comply with the examiner’s view that if “used as
a functional group, the term acrylic must be accompanied by the terms ‘acid’ and ‘ester’” (Paper No.
15; page 4). It is further clear from the specification that, contrary to the examiner’s position (Paper
No. 17, unnumbered page 3, third full paragraph), the “acrylic functionality” can be obtained by the
reaction of an acid halide, e.g., acryloyl chloride, with the hydroxy compound chlorinated
hydroxyrubber, which is, of course, a classic textbook synthesis for carboxylic acid esters. Thus, it
appears that the “acrylic functionality” based on these components would be the –O–CO-CH=CH2
moiety, linked to the rubber through the ester linkage. Indeed, the examiner has allowed claim 2 (see
above note 1) drawn to such a rubber in product-by-process format which specifies the two starting
materials we used above to demonstrate what we find to be in appellants’ written description, but has
form (answer, page 4). The remaining claims of record, claims 3 through 11 and 17 through 19 stand
allowed.
2 The examiner stated that the grounds of rejection were set forth in the “prior Office action, Paper No.
17” (answer, page 3) That Office action, mailed September 9, 1996, states that the grounds of
rejection were set forth in “the Office action dated March 28, 1996” (Paper No. 15). While the
“ground of rejection” advanced on appeal is not found in the same “single prior action,” See Manual of
Patent Examining Procedure (MPEP) § 1208 (6th ed., Rev. 3, July 1997; 1200-15), we have been
able to determine the examiner’s position and it is apparent that appellants have not been placed at a
disadvantage, and thus we decide this appeal rather than remand the application to the examiner on this
basis.
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