Appeal No. 1995-0770
Application No. 07/929,457
Considering the disclosure as a whole, including the specification, the Example 1,
and the original claims, we find sufficient evidence that persons skilled in the art would
recognize that appellants were in possession, as of the filing date, of the invention as now
claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed.
Cir. 1991). The rejection under 35 U.S.C. § 112, first paragraph is reversed.
The rejections under 35 U.S.C. § 103
In relevant part, the examiner’s rejections hinge upon the following conclusions
(Examiner’s Answer, page 5):
It would have been obvious to one of ordinary skill in the art to substitute the
three temperature ranges taught by Sanchez for the process taught by
Kamath ‘696 and to substitute other high temperature initiators as taught by
Kamath[ ‘703].
However, our review of the record indicates that neither appellants nor the examiner have
appreciated the relevance Kamath '703 has in determining the patentability of the claims
on appeal. For example, as discussed in detail below Kamath ‘703 describes a
polymerization process using initiators, monomers and a three stage heating schedule as
required by claim 1 on appeal. We see no reason to expend the resources needed in
order to determine whether the examiner’s proposed modifications of Kamath ‘696 are
proper under 35 U.S.C. § 103 where there is appreciably better evidence of obviousness
available. Accordingly, we vacate the examiner's prior art rejections in lieu of the new
grounds of rejection set forth below.
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