Appeal No. 1997-0704
Application No. 08/324,855
The examiner states, for each rejection under § 102, that
"[i]t is inherent that when the prior art method step is the
same as the claimed method performed with the same composition
then the prior art has the same properties as is claimed."
(Answer, pages 3-4). However, the examiner has not met the
initial burden of establishing that the prior art discloses
the same composition as the method of claim 35 on appeal.
The examiner finds that Dueber teaches the specific
unsaturated monomers recited in the method of appellants’
claims, citing column 7, line 7-column 8, line 53 (Answer,
page 4). Although Dueber does list some monomers from the
first class of "unsaturated" monomers recited in claim 35 on
appeal, the examiner has not pointed to any monomers listed by
Dueber that are included in the second class of "ethylenically
unsaturated monomer" recited in claim 35 on appeal, much less 1
in the amounts recited in the claimed method. Furthermore,
the mere listing of a long list of monomers, as in Dueber, has
not been shown by the examiner to "describe" the claimed
1The only bisphenol-A type monomers listed by Dueber do
not fall within the second class of monomers listed in claim
35 on appeal (see Dueber, column 7, lines 42-45).
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