Appeal No. 95-3398
Application No. 08/103,318
II. Claims 27-34 also stand rejected for obviousness under
35 U.S.C. § 103 in view of Albright taken in combination with
Frechtling.
Based on the record before us, we agree with appellants that
the examiner has failed to establish a prima facie case of
obviousness with regard to each of the rejections before us.
Accordingly, we shall not sustain either of those rejections
which we now address seriatim:
I. The “Double Patenting” Rejection
The examiner acknowledges that the claims of Carmody do not
expressly require that either acrylic acid or methacrylic acid be
polymerized onto the surface of a hydrophobic copolymer. To
remedy this deficiency, the examiner refers to Example III in the
Carmody specification as showing the polymerization of
methacrylic acid onto the surface of a hydrophobic copolymeric
powder. This approach is improper since, when considering the
question of obviousness-type double patenting, the patent
disclosure may not be used as prior art. See In re Vogel,
422 F.2d 438, 441, 164 USPQ 619, 622 (CCPA 1970).
In directing attention to Carmody Example III, the examiner
incorrectly states that methacrylic acid is the hydrophilic
monomer of the Carmody claims. Rather, as we see it, the
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