Appeal No. 1997-1515
Application 08/361,891
Regarding the separating and dispersing steps of
appellant’s claim 49, the examiner argues that Ahmed’s
teaching (col. 5, lines 20-24) that after the polymerization,
the dispersion may be diluted with either the liquid used in
the polymerization or with other suitable compatible
insulating hydrophobic liquids, suggests separation because it
indicates that the particles do not have to remain in the
liquid used for polymerization (answer, page 5). The
examiner’s reasoning is deficient in that the examiner has not
explained why, even if Ahmed indicates that the particles need
not remain in contact with the original liquid, the reference
would have led one of ordinary skill in the art to separate
the particles from the liquid and replace the liquid with a
different liquid. Particularly, the examiner has not
explained why Ahmed would have led such a person to select a
polar solvent as the polymerization liquid and a dielectric
nonpolar solvent as the solvent into which the separated
particles are dispersed as required by appellant’s claim 49.
The record indicates that the reasoning relied upon by the
examiner for using separation rather than dilution comes only
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