Appeal No. 1997-3643
Application No. 08/484,047
omitted] ... The extent to which such suggestion must be explicit in, or may be fairly inferred from, the
references, is decided on the facts of each case in the light of the prior art and its relationship to the
aplicants’ invention.”).The examiner’s combination of the teachings of Savageau in view of Uhlemayr
is not
well founded as the references as combined fail to teach all the claimed limitations and furthermore, the
references fail to suggest such limitations. Specifically, as described by the examiner, Savageau does
not motivate one skilled in the art to form an alkyd having the requisite acid number and hydroxyl
numbers. Likewise, there is no motivation provided to modify the unsaturated fatty acids of Uhlemayr
to have the claimed iodine number. Moreover, there is no suggestion provided by the references to
select only those unsaturated fatty acids, polyols and dicarboxylic acids of Savageau and Uhlemayr and
react them together to achieve appellants’ alkyd resin. Accordingly, the references fail to establish a
prima facie case of obviousness.
NEW GROUND OF REJECTION
We enter a new ground of rejection against appellants' claims pursuant to 37 CFR § 1.196(b).
Specifically, appealed claims 6-14 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which the appellants
regard as the invention.
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