Appeal 2006-2350
Application 10/444,104
Obviousness over Uchino 206
The rejection over Uchino 206 fails for reasons analogous to those
discussed above with regard to the rejection of claim 29 over Uchino 978.
This is because the Examiner rejects claims 19, 20, and 23-38 over Uchino
206 on the basis that the disclosure of calcium-containing compounds in
Uchino 206 “broadly makes obvious calcium carbonate because AA [sic]
generic disclosure renders a claimed species prima facie obvious.”
(Answer 5). Uchino 206 provides no guidance with respect to the selection
of the calcium-containing compound and only exemplifies calcium dibasic
phosphate. The Examiner has provided no convincing evidence or reasoning
supporting the conclusion that it would have been obvious to one of ordinary
skill in the art to select one of the claimed calcium compounds for use in the
slurry of Uchino 206.
CONCLUSION
In summary, the Examiner rejected claim 20 under the written
description requirement of 35 U.S.C. § 112, ¶ 1 and claims 19, 20, and 23-38
under 35 U.S.C § 103(a) as unpatentable over either Uchino 978 or Uchino
206. We do not sustain the rejection of claim 20 under 35 U.S.C. § 112, ¶ 1,
nor do we sustain the rejection of claims 19, 20, and 23-38 under 35 U.S.C.
§ 103(a) over Uchino 206 or the rejection of claim 29 under 35 U.S.C.
§ 103(a) over Uchino 978. We, however, do sustain the rejection of claims
19, 20, 23-28, and 30-38 under 35 U.S.C. § 103(a) over Uchino 978. We,
therefore, affirm-in-part.
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