Appeal No. 1997-1515
Application 08/361,891
from appellant’s specification and not from the reference and,
therefore, is based upon impermissible hindsight. See W.L.
Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). The examiner (answer, pages 6 and 8) also relies
upon the discussion of the prior art in Ahmed wherein bulk
polymers are pulverized into particles which are dispersed in
a liquid (col. 2, lines 43-48). The examiner does not
explain, however, and it is not apparent, why this disclosure
would have fairly suggested, to one of ordinary skill in the
art, substituting separation and dispersion for the dilution
in Ahmed’s process.
In response to appellant’s argument (reply brief, page 4)
that Ahmed’s particles are doped with water, the examiner
argues that the “comprising” transition term of appellants’
claim 49 opens the claim to unspecified components such as
water (supplemental answer, page 2). Ahmed teaches that the
water
-9-9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007