Appeal No. 96-3726
Application No. 08/074,009
and criticisms concerning this rejection plainly relate to the
enablement requirement. In any event, it is clear to us that
the claims on appeal satisfy both the written description and
enablement requirements for the reasons expressed by the
appellants on pages 5 through 9 of the brief. It follows that
we will not sustain the examiner’s section 112, first
paragraph, rejection of claims 1, 2, 10, 11 and 19.
As for the section 102 rejection based upon Manabe, it is
the examiner’s position that certain “limitations of the base
claim, i.e. the paint forms a coated film having specific
properties and the paint is a polyester system are non-
patentable article limitations in a method claim” (answer,
pages 3-4) and that such “limitations set forth above do not
affect the [claimed] method in a manipulative sense and
therefore cannot be held patentably limiting” (answer, page
4). The examiner is incorrect. The properties set forth in
appealed claim 1 define the here claimed method whereby the
desired leather-like touch is obtained, and all limitations
must be accounted for in the prior art rejection under review.
As argued by the appellants and impliedly acknowledged by the
examiner, the disclosure of Manabe does not satisfy these
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007