Appeal No. 1998-3278 Page 6
Application No. 08/647,881
Even if the disparate teachings of Haines and Howell were to be combined by one of ordinary
skill in the art, the invention as claimed would not have been suggested. Neither reference describes a
process of molding a liquid cross-linkable composition. In addition, neither reference describes
applying uniform elevated pressure at the level required to dissolve air in a liquid cross-linkable
composition. Thus, the combination of references lacks the required teachings or suggestions to render
the process of the claims obvious to one of ordinary skill in the molding art at the time of invention.
The Examiner indicates that “the functional recitations as argued have not been given patentable
weight because it is [sic: they are] narrative in form.” (Answer, page 5). We agree with the Appellant’s
comment in the Reply Brief that “[r]ecognizing that the claims in issue are process claims and hence
necessarily functional in nature and that there is no rejection of the claims as being indefinite, the basis
for the Examiner’s rejection under Section 103 is unsupportable in law or in fact.” (Reply Brief, page
1). The claims are limited to a process including a step of “subjecting the liquid composition to an
elevated uniform pressure during curing of the composition.” (claim 1). The pressure applied must be
such that “the composition undergoes a reduction in volume such that formation of visible bubbles in the
liquid composition is prevented by dissolving air within the initially liquid composition.” (claim 1). This
recitation requires that the mode of pressure application be such that the pressure is of a level and
duration that dissolves air and prevents bubbles as well as results in a reduction of composition volume.
The Examiner is not free to disregard the pressure limitation.
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007