Appeal No. 1996-3657
Application No. 08/201,517
particular solvents in the water repellant composition of
Narula. Even accepting, as a general proposition, that it
would have been obvious to add an “alcohol” or an “ether” to
the water repellant composition of Narula, as suggested by
Price and Roth, the examiner has failed to explain why it
would have been obvious to select one of the particular
glycol, glycol ether or glycol ether acetate solvents recited
in appellants’ claims from a myriad of possibilities. See In
re Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir.
1994); and In re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941,
1943 (Fed. Cir. 1992).
In our view, the foregoing rationale applies equally to
both the method claim which was the subject of our prior
decision, and
the present composition claims now before us. Accordingly,
the decision of the examiner as to the composition claims is
reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
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