Appeal No. 1999-2085
Application 07/839,409
The “basic hydrous condensation polymer” of the appealed claims is
disclosed in the cited prior art polymerization instructions.
The use of “capacitance” adding compounds such as ethers or
polyhydric alcohols is disclosed at example 1 of Moyle et al. and example 13
of Geary. The “capacitance” adding compound as claimed has not [sic]
definite chemical structure (see claims 1-11, 13-19 and 21-24) and thus may
be any solvent conventionally used with the resin compositions of the cited
prior art. The particle size range of the claimed dispersion is not outside the
less than 4 micron limit of Schmitz. The composition and method of the
appealed claims is considered to comprise a routine embodiment of the
cited prior art resin-solvent dispersions.
As we understand the examiner's position, the compositions described in Example 1 of
Moyle and Example 13 of Geary satisfy the claim requirements but for the limitation that the
coordinated complex of claim 1 and the hydrous polymer dispersion formed in claim 16
have particle sizes of less than 2,000 nm. Presumably, the examiner relies upon Schmitz
to account for this difference. We can only guess as to what the examiner's position is
because as is apparent, the examiner has not favored the record with a statement as to
what would have been obvious to one of ordinary skill in the art from a consideration of
2
these references. Be that as it may, it appears clear that Example 1 of Moyle and
Example 13 of Geary are at the heart of the examiner's rejection, and thus, we will focus on
these disclosures.
2It is always curious when an examiner issues a rejection under 35 U.S.C. § 103 and
does not specifically state what would have been obvious to one of ordinary skill in the art. For
future guidance we refer the examiner to MPEP § 706.02(j) for a guide of how to consider
issues under this section of the statute and structure a rejection.
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