Ex parte DALTON et al. - Page 5

          Appeal No. 1996-3990                                       Page 5           
          Application No. 08/145,239                                                  

               More fundamentally, there is no suggestion in Shanton of               
          forming a composition including appellants' specified                       
          component oxime(s) and ester(s) in the particularly defined                 
          ratio as claimed. From our perspective, the assertions of the               
          examiner regarding the reach of the teachings of Shanton                    
          appear to be based on conjecture and unsupported generalities,              
          not facts as required. See In re Freed, 425 F.2d 785, 787, 165              
          USPQ 570, 571 (CCPA 1970).  Here, the examiner's commentary to              
          the effect that the claimed component ratio encompasses "... a              
          very broad range" and that "remembering that the material of                
          Shanton is subsequently dried, one would be inclined to use as              
          little solvent as possible" essentially begs the question at                
          hand and falls significantly short of establishing the prima                
          facie obviousness of the claimed component range in the                     
               In summary, the only motivation and factual basis we can               
          locate in support of the examiner's stated rejection is the                 
          description of appellants’ invention in their specification.                
          Hence, on this record, it is our view that the examiner used                
          impermissible hindsight when rejecting the claims.                          
          Accordingly, we will not sustain the examiner’s rejection.                  

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