Appeal No. 1997-1135
Application 08/375,196
reference teaches, are necessary to obtain the desired
properties. Moreover, Shiba and Carey, Jr. both require that
the components of the fibers have different melting points in
order to obtain the desired properties. Substituting
Keuchel’s single polymer for the polymers having different
melting points, it appears, would render the products produced
by Shiba and Carey, Jr. unsuitable for their intended
purposes. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).
For the above reasons, we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of appellant’s claimed invention.
REMAND
In response to the examiner’s new ground of rejection of
claims 22 and 23 under 35 U.S.C. § 112, second paragraph, as
being indefinite due to depending from canceled claim 21
(answer, page 6), appellant submitted an amendment (filed
October 17, 1996) wherein claim 22 is amended to depend from
claim 9. The examiner does not include claims 22 and 23 in
the rejection under 35 U.S.C. § 112, second paragraph, in the
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