Appeal No. 98-3269
Application No. 08/703,266
other hand, discloses a process for preparing polymer
particles that does not contain the claimed stable free
radical compound in the reaction mixture. Significantly, we
find no teaching or suggestion in Georges to use the
crosslinking compound employed by Wada, nor do we find any
teaching or suggestion in Wada for utilizing the stable free
radical compound disclosed by Georges. In the absence of such
a requisite teaching or suggestion, we must conclude that the
examiner's rejection is based upon the use of impermissible
hindsight to arrive at the claimed invention.
In addition, the examiner recognizes that neither of the
applied references discloses obtaining polymer particles
having the claimed particle size distribution. In the absence
of such teaching, the examiner reasons that "in view of the
similarity of the present method to those of both references,
there is a reasonable basis to believe that the claimed
particle size distribution and pore size distribution are the
inherent result of the reference processes and the burden is
on appellant to show otherwise. In re Spada, [911 F.2d 705,
708,] 15 USPQ2d 1650 [sic, 1655, 1658 (Fed. Cir. 1990)]" (page
5 of Answer). However, since both references disclose
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