Appeal No. 2004-2233
Application No. 10/100,331
The appellant argues that Michels does not teach the
formation of the aqueous polymer dispersion by an emulsion
polymerization process. (Appeal brief at 6.) This argument is
utterly without merit. Nothing in the express language of the
claims or in the written description of the specification limits
the method by which the latex is formed. In re Self, 671 F.2d
1344, 1348, 213 USPQ 1, 5 (CCPA 1982)(“Many of appellant’s
arguments fail from the outset because, as the solicitor has
pointed out, they are not based on limitations appearing in the
claims.”).
Even if such limitation exists, which it does not, it is
well settled that the patentability of a product rests on the
actual product, not on the method by which it is produced, and
that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art,
the burden of proof is on the applicant to prove otherwise. In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed.
Cir. 1985).
The appellant urges that “[t]here is no disclosure [in
Michels] that the organic solvents are completely removed.”
(Appeal brief at 6; reply brief at 2.) This argument is also
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