Appeal No. 1999-2085
Application 07/839,409
Example 13 of Geary describes the formation of a composition which is prepared
from, inter alia, paraldehyde, urea and ethylene glycol. Those three ingredients along with
others are polymerized and after polymerization is complete, the material is ground in a
hammermill and mixed with bentonite and sodium sulphosuccinate. Example 1 of Moyle is
directed to the formation of an oil paint. While not clear from the Examiner's Answer, we
believe the examiner has focused on that portion of Example 1 which appears at column 6,
lines 31-52. Therein, a composition was prepared from a halophenol and
polyaminealdehyde using propylene glycol monomethyl ether as a solvent. From the
examiner's statement of the rejection, it appears that he believes that the propylene glycol
monomethyl ether solvent of Moyle and ethylene glycol as used in Example 13 of Geary
are the “capacitance adding compound” required by claim 1 on appeal. While the
examiner has observed that the particle size required by the claims on appeal is “not
outside the less than 4 micron limit of Schmitz” the examiner has not explained why it would
have been obvious to one of ordinary skill in the art to modify the compositions of Moyle or
Geary in order to arrive at that particle size.
Turning first to claim 1 on appeal, the examiner has not explained how or why the
compositions set forth in Example 13 of Geary and Example 1 of Moyle describe “particles
of a coordinated complex” of the specified basic, hydrous condensation polymer and a
capacitance adding compound. While the solvents identified by the examiner may be
included within appellant's list of capacitance adding compounds, that does not
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