Appeal No. 96-1948
Application 07/995,952
which appear to be relevant in determining the patentability of polymer blends per se.
Furthermore, the “SEARCH NOTES” section of the administrative file wrapper indicates
that the examiner has not performed a search using the APS system or the computerized
data bases available to the examiners.
Upon return of the application, the examiner should review each of the claims on
appeal and ensure that a complete prior art search has been performed.
Rejection Under 35 U.S.C. § 112, Second Paragraph
The examiner has rejected the claims on appeal under this section of the statute in
that “[t]he phrase [sic, phrases] ‘different thermal properties’ and ‘mutual solventN [are]
vague and indefinite because it [sic] is [sic] relative.” In making this rejection, it appears
that the examiner has not used the correct legal standard. As set forth in In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), claims must not be read in a
vacuum. Rather, the claims must be read in light of the supporting specification and the
relevant prior art as they would have been read by one skilled in the art. The statement of
the rejection appearing at page 3 of the Examiner’s Answer indicates that the examiner
has read the claims in a vacuum since the examiner does not refer to the supporting
specification or the prior art references attached to the Appeal Brief. These references
are relevant since they are concerned with the technology of polymer blends.
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