Appeal No. 1996-0823
Application No. 08/217,189
to show a patentable difference between the product of claim 15 and the product
described by Lang in column 10, example 4. As stated in a similar context in
In re Fessmann, 489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA 1974), "It was
appellant's duty to present evidence which would demonstrate the unobvious character of
his claimed invention over the cited references". This appellants have not done.
On the strength of the teaching in Lang, column 10, example 4, and in the absence
of rebuttal evidence by the appellants, we affirm the examiner's rejection of claim 15 under
2
35 U.S.C. § 103.
Claims 1 through 4, 8 through 14, 16 and 18
As stated in In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983),
It is axiomatic that, in proceedings before the PTO, claims in an application
are to be given their broadest reasonable interpretation consistent with the
specification, and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.
[citations omitted].
2We note page 9, example 3 of appellants' specification, describing the hydroxy propylation of
chitosan. As reported there, the aqueous reaction mixture containing hydroxypropyl-chitosan has 1.5 ppm
propylene oxide before drying. That amount is well below the amount of propylene oxide reported in
examples 1, 2, and 4 and meets the limitation in claim 15 ("wherein the N-hydroxyalkylchitosan, has a
residual content of hydroxyalkylation reagent of less than 5 ppm"). In the event of any further prosecution of
the subject matter of this application, e.g., by way of a continuing application, we recommend that both
appellants and the examiner consider the significance of example 3 in the instant specification.
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007