Appeal No. 96-2323
Application 08/116,555
over Fan of appellants’ independent process claims 1 and 7,
and dependent claims 2, 3, 5, 7-15 and 17, as stated and
argued by the examiner, is not well founded. Because 13
Encyclopedia of Polymer Science and Engineering, which is
applied to dependent claim 4, and Cadel, which is applied to
dependent claims 4 and 16, were not relied upon for teachings
which could overcome the deficiencies in the examiner’s
arguments regarding the evidence relied upon by appellants, we
also conclude that the rejections of claims 4 and 16 as stated
and argued by the examiner are not well founded.
We remanded the application to the examiner (paper no.
28, mailed April 6, 2000) to 1) undertake a claim-by-claim
analysis; 2) consider the scope of appellants’ claims; 3)
consider the “reach” of the prima facie case of obviousness,
i.e., the extent to which some, but not all, of the claimed
subject matter would have been prima facie obvious in view of
the cited prior art; 4) consider the degree of predictability
or unpredictability in the art; 5) consider the comparative
data set forth in the Kanda Declaration and, taking into
account those factors, address the question of whether the
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