Appeal 2007-1688
Application 10/222,617
As correctly argued by Appellants' (Substitute Brief 11, Reply Br.,
filed Jan. 2, 2007, 4; Reply.Br., filed May 3, 2006, 2-3), Arkens contains no
anticipatory disclosure of the claim 1 requirements "at least 5% by weight …
hydroxyl functional monomer" and "at least 30% by weight … carboxylic
acid monomer." The Examiner points out Arkens' polymer is made from 1%
to 100% by weight of ethylenically unsaturated carboxylic acid monomer
and optionally additional ethylenically unsaturated monomers such as
hydroxyethyl acrylate which would be present in an amount from 0% to
99% by weight (Supplemental Answer 5-6; Arkens, col. 4, ll. 1-20).
However, the fact that Arkens' very broad weight percent ranges somewhat
overlap the claim 1 weight ranges is inadequate to establish anticipation.
Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999-1000, 78 USPQ2d
1417, 1424 (Fed. Cir. 2006).
The Appellants also correctly argue that the Examiner's anticipation
finding is inappropriately based upon selectively choosing and excluding
various disclosures in Arkens (Reply Br., filed Jan. 2, 2007, 4; Reply Br.,
filed May 3, 2006, 3). The Examiner has not responded to this argument.1
Moreover, it is well settled that, for a § 102 rejection to be proper, the
applied reference must clearly and unequivocally disclose the claimed
composition without any need for picking, choosing, and combining various
disclosures not directly related to each other by the teachings of the
1 The Examiner also has not responded to the Appellants' arguments
concerning separately grouped dependent claims 13, 14, and 15.
3
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