Appeal No. 1999-0341
Application No. 08/543,351
reasoning in support of the rejection. We further reference appellants’ Brief (Paper
No. 42, filed March 17, 1997), and appellants’ Reply Brief (Paper No. 44, filed
August 4, 1997) for the appellants’ arguments in favor of patentability.
CLAIM GROUPING:
Appellants state (Brief, page 4) “[t]he appealed claims do not stand or fall
together because they were not rejected together.” Appellants point out that claims
14 and 15 were rejected in one rejection and claim 16 in another. Thus, we interpret
appellants’ comments as setting forth two claim groupings group I, claims 14 and
15, and group II claim 16. We will therefore limit our discussion to claims 14 and 16.
Rejection Under 35 U.S.C. §§ 102 or 103:
Claim 14:
The examiner’s basis for the rejection is as follows:
The above prior art clearly teaches that the claim designated
compound is an old insecticide applied to the same locus of the
claims rendering the instant claims unpatentable. Column 12, lines 50
and 51; and column 58, lines 30-35 teach the claimed compound.
Column 54, lines 18-20 teaches the same locus (wood) as in the
claims.
In response to the examiner’s rejection appellants state (Brief, page 5) that
“[w]hile [a]ppellants agree Shiokawa suggests that one could protect wood, it is
submitted that this disclosure does not raise to the level of anticipation.” Appellants
support this argument by stating (Brief, page 5) that “Shiokawa … does not teach a
specific example where any [of] the insecticides disclosed therein will preserve
technical materials, let alone with the instantly claimed insecticide.” Appellants
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