Appeal No. 1997-0140
Application No. 08/266,290
sealant or a coating. The composition comprises one of the
recited isocyanates, at least one of polyketimines,
polyenamines and oxazolidines, and a compound which generates
water under curing conditions, such as internal organic salts,
salts of organic amines and salts of organic acids.
Appealed claims 1, 3-5, 8-10, 12-14 and 16 stand rejected
under 35 U.S.C. § 112, first paragraph, as being based upon a
non-enabling disclosure. In addition, appealed claims
1-16 stand rejected under 35 U.S.C. § 103 as being obvious
over Markusch in view Akiyama.
Upon careful consideration of the opposing arguments
presented on appeal, we agree with appellants that the
examiner's rejections are not sustainable. Accordingly, we
will reverse the examiner's § 112 and § 103 rejections.
We consider first the examiner's rejection under
35 U.S.C. § 112, first paragraph. According to the examiner,
"[t]he use of the phrase 'a compound which generates water' is
rather vague and does not define with particularity the
boundaries of Applicants' invention" (page 2 of office action
of September 8, 1994).
In setting forth a rejection under 35 U.S.C. § 112, first
paragraph, the examiner has the initial burden of establishing
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