Appeal No. 97-1848
Application 08/338,074
The Examiner *** essentially overlooks this important
limitation of applicants' claims contending that the
hydroxyl value would *** [have been] obvious to one
skilled in the art and requires only routine skill to
find an optimum or workable range. In applicants'
claims, hydroxyl value is critical in maintaining the
desired acid etch properties.
***
[I]t is believed that the Examiner has [not] established
that control of the hydroxyl value would be within the
skill of the art [to achieve "a high level of acid etch
resistance"].
B. Discussion
It is important in presenting an Examiner's Answer, that
an examiner address and respond to arguments made by the
applicants in a brief on appeal. It is particularly important
in a case where applicants maintain that the essence of their
invention is not described by the prior art. We have not
found a detailed or cogent response by the examiner to the
argument made by applicants as set out in Finding 6. Yet,
maintaining the hydroxyl value at a certain level is the
essence of applicants' modis operandi for achieving high acid
etch resistance. The examiner has thus failed to address a
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