Appeal No. 97-1843
Application 08/092,574
his arguments that the claims are not obvious over the prior art. See Brief, Paper No. 40,
pages 8 and 13. “After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance of evidence
with due consideration to persuasiveness of argument.”
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “If a prima
facie case is made in the first instance, and if the appellant comes forward with reasonable
rebuttal, whether buttressed by experiment, prior art references, or argument, the entire
merits of the matter are to be weighed.” In re Hedges, 783 F.2d 1038, 1039-40, 228
USPQ 685, 686 (Fed. Cir. 1986).
The rejection under 35 U.S.C. § 103 is reversed.
NEW GROUND OF REJECTION UNDER 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b) we make the following new ground of
rejection.
Claim 6 through 9 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claim 7 requires that the gel composition comprise a CARBOPOL polymer.
Claim 6 requires that the gel composition comprise CARBOPOL 934. CARBOPOL and
CARBOPOL 934 appear to be trademarks or trade names. As such, the scope of these
terms is unclear because the terms do not identify any particular material or product. It is
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