Appeal No. 1997-3609
Application No. 08/483,349
novel characteristics of an applicant's composition as defined
in the claim. Janakirama-Rao, 317 F.2d at 954, 137 USPQ at
896; see also Herz, 537 F.2d at 551-52, 190 USPQ at 463. An
applicant bears the initial burden of showing the basic and
novel characteristics of a claimed composition. In re De
Lajarte, 337 F.2d 870, 874,
143 USPQ 256, 258 (CCPA 1964).
Our reading of appellants' specification appears to
suggest that amines similar to the amines disclosed in Dormish
may be included in the claimed adhesive composition. See 3
Specification, p. 17, lines 3-18. Thus, upon return of this
case to the examining group, we would urge the examiner to
step back and consider whether the claims, read in light of
the above-cited authority, reasonably exclude the presence of
a diamine and/or triamine as required by Dormish. In so
doing, the examiner should review the specification, the
reference and any showing by appellants relating to the basic
and novel characteristics of the claimed adhesive to determine
3It further appears that fillers may be included in the
claimed adhesive composition. See Specification, p. 18, lines
4-7.
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007