Appeal No. 95-3835
Application 08/107,047
THE REJECTIONS
Claims 1-7 and 20-32 stand rejected under 35 U.S.C. § 112, first paragraph, on the
ground that the specification fails to provide an enabling disclosure for the claimed
invention. Claims 1-6, 20, 21, 23, 24, 26, 27, 29, 30 and 32 stand rejected under 35
U.S.C. § 102(b) as being anticipated by, and under 35 U.S.C. § 103 as being obvious
over, each of Neet and ECT.2
OPINION
We have carefully considered all of the arguments advanced by appellant and the
examiner and agree with appellant that the aforementioned rejections are not well founded.
Accordingly, these rejections will be reversed.
Rejection under 35 U.S.C. § 112, first paragraph
The examiner argues that the electrosetting property recited in appellant’s claims is
due to highly unpredictable chemical interactions and that the claims therefore must be
limited to materials which have been shown to have electrosetting properties (answer,
pages 2-3 and 5-8). The examiner acknowledges that appellant has, as pointed out by
appellant (brief, pages 12-13), disclosed working examples, but argues that appellant
provides no theory or general reference which gives guidance which would enable one of
2The rejections of claims 7, 22, 25, 28 and 31 over prior art were withdrawn in the
examiner’s answer (page 3).
3
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