Appeal No. 94-3846
Application 07/891,376
Having carefully studied the record before us, it is our determination that neither
of the above noted rejections can be sustained. Our reasons are set forth below.
The examiner points out that “[t]he polymer [of Yasui] is the product of emulsion
or suspension or polymerization methods” and that “[e]mulsion polymerization includes
oil-in-water and water-in-oil arrangements, [wherein] the later [sic, latter] constitutes
[the] claimed ‘dispersed [as] droplets in an inert organic phase’” (Answer, page 3). It is
the examiner’s implicit position that the emulsion polymerization generally referred to
by Yasui would include “water-in-oil arrangements” that would necessarily produce
polymer particles having a hydrophobic surface as required by the appealed claims.
However, the Yasui patent contains utterly no disclosure of a hydrophobic surface or of
a hydrophobic suspending agent which results in the aforementioned hydrophobic
surface as recited in the appellants’ claims. It is, therefore, clear that the examiner’s
above noted position is improperly based upon conjecture, speculation, or assumptions
rather than a factual basis as required by § 103. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
The examiner’s rejection is further deficient with respect to his position
concerning the claim 1 step of “coating the polymer particles with a hydrophilic material
in the absence of an organic solvent, such as to render the polymer surface
hydrophilic.” Specifically, the examiner seems to equate this claimed step with Yasui’s
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