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
composition.
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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