Appeal No. 1999-2085
Application 07/839,409
necessarily mean that the compositions described in the two examples necessarily and
inevitably result in the formation of a “coordinated complex” as required by claim 1 on
appeal. Absent a fact-based explanation from the examiner as to why these two
compositions do describe a coordinated complex as required by claim 1 on appeal, we
have no basis to determine that the subject matter of claim 1 as a whole would have been
obvious to one of ordinary skill in the art from a consideration of these references.
Nor has the examiner properly considered that aspect of the claimed subject matter
directed to particle size. Merely pointing to disclosure in a reference of a given particle
size does not satisfy the examiner's burden under this section of the statute. The examiner
has not explained why it would have been obvious to one of ordinary skill in the art to
modify the compositions relied upon in Geary or Moyle in order to arrive at this particle
size.
As previously indicated, claim 16 does not require the presence or use of the
capacitance adding compound and consequently the formation of the coordinated
complex required by claim 1 on appeal. However, claim 16 does require that the specified
mixture be condensed for a time sufficient to cause a limited degree of condensation to
form a hydrous polymer dispersion having particle sizes of less than 2,000 nm. As
explained above, the examiner has not properly considered this aspect
of claim 16 under this section of the statute. Again, merely pointing to a reference as
describing a particle size does not meet the examiner's obligations under 35 U.S.C.
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