Appeal No. 2002-2317
Application No. 09/025,607
are one type of hot-melt adhesive indicates that the preamble of
claim 1 limits the claimed invention not only to a hot-melt
adhesive composition but, rather, to a hot-melt adhesive
composition having pressure-sensitive adhesive properties.
Consequently, the preamble of claim 1 gives life, meaning and
vitality to the claim and, therefore, is to be construed as if in
the balance of the claim.
Hence, the examiner’s argument that “hot-melt pressure-
sensitive adhesive composition” in the preamble of claim 1 merely
sets forth an intended use of the blend recited in the body of
the claim is incorrect.
The examiner has not pointed out where Murdock discloses a
hot-melt pressure-sensitive adhesive composition, or explained
how Murdock would have fairly suggested such a composition to one
of ordinary skill in the art. Consequently, the examiner has not
carried the burden of establishing a prima facie case of
anticipation or obviousness of the invention claimed in the
appellants’ claim 1 over Murdock. Accordingly, we reverse the
rejections of claims 1-4, 7-10, 12-22, 24, 28 and 29 under
35 U.S.C. §§ 102(b) and 103 over Murdock.
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