Appeal No. 96-2810
Application 08/017,086
O’Farrell,
853 F.2d 894, 903, 7 USPQ2d 1673, 1680 (Fed Cir. 1988); In re
Fine, 837 F.2d 1071, 1075, 5 USPQ2d 1596, 1599 (1988). We
find that the only incentive to use hydrophobically modified
cellulose ethers as thickeners in ceramic glazes in this case
is provided by appellants’ disclosure. Accordingly, we
reverse the examiner’s rejection of Claims 1-4 and 6-8 under
35 U.S.C. § 103 as being unpatentable in view of the combined
prior art teachings of Norris and Lo.
2. Section 102 Rejection
The issue presented by the examiner’s rejection of
product-by-process Claim 9 under 35 U.S.C. § 102(e) over the
disclosure of Norris is an entirely different matter. We
affirm the rejection of Claim 9 under section 102(e) as
described by Norris.
To sustain the examiner’s rejection under 35 U.S.C. §
102, we must first find that the product made by the process
of appellants’ Claim 7 prima facie reasonably appears to be
the same as a product made by a process Norris describes. In
re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
- 8 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007