Appeal No. 1996-1040
Application 08/069,434
The rejection under 35 U.S.C. § 112, second paragraph
The examiner has rejected claim 14 based on the presence, therein, of the term
"providing" which the examiner urges renders the claim indefinite because it does not
clearly set forth the metes and bounds of the claim. We have considered the arguments of
both the examiner and appellant relating to this rejection and find that we are in agreement
with the appellant that the rejection is improper. We reverse the rejection under 35 U.S.C.
§ 112, second paragraph, and adopt appellant's reasoning at pages 8-9 of the Appeal
Brief as our own.
The rejections under 35 U.S.C. § 103
Claims 6-8:
In rejecting claims 6-8 under 35 U.S.C. § 103, the examiner states (Answer, page
3):
The process merely recites the mixing of foamed vegetable starch and
cedar oil. There (sic, The) mere mixing of ingredients, broadly stated,
cannot form the basis of a patentable process nor can patentability be
predicated on a recitation of a result.
We have carefully considered the arguments of both the examiner and appellant
relating to this rejection and are persuaded that the examiner has failed to establish a
prima facie case of obviousness within the meaning of 35 U.S.C. § 103. We reverse this
rejection and adopt appellant's reasoning as set forth at page 11 of the Appeal Brief as
our own, adding only the following for emphasis.
On this record, the examiner has failed to consider the claimed subject matter as a
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