Ex parte TOMIOKA et al. - Page 4




                 Appeal No. 1998-2203                                                                                                                   
                 Application 08/428,497                                                                                                                 


                 are solvents used by the appellants in combination with water                                                                          
                 (specification, page 13).  Vaughan does not disclose that the                                                                          
                 shaped articles to be imidized can include poly(amic acid)                                                                             
                 paper made from a poly(amic acid) fibrid (page 6, line 100 -                                                                           
                 page 7, line 4).                                                                                                                       
                          The appellants acknowledge that making polyimide paper                                                                        
                 from a polyimide fibrid was known in the art, but do not                                                                               
                 acknowledge that it was known in the art to make a poly(amic                                                                           
                 acid) paper from a poly(amic acid) fibrid and then imidize the                                                                         
                 paper to form a polyimide paper (specification, pages 2-3).2                                                                           
                          The portion of FR ‘004 relied upon by the examiner                                                                            
                 (answer, page 3) discloses making polyimide pulp particles by                                                                          
                 a precipitation process involving shearing (page 4, item 3;3                                                                           
                 pages 7-8).                                                                                                                            
                          The examiner relies (answer, page 3) upon the Sander                                                                          


                          2It is axiomatic that our consideration of the prior art                                                                      
                 must, of necessity, include consideration of the admitted                                                                              
                 prior art.  See In re Hedges, 783 F.2d 1038, 1039-40, 228 USPQ                                                                         
                 685, 686 (Fed. Cir. 1986); In re Davis, 305 F.2d 501, 503, 134                                                                         
                 USPQ 256, 258 (CCPA 1962).                                                                                                             
                          3Item 3 on page 4 of the FR ‘004 translation is called                                                                        
                 “aromatic polyamides”, but the structure shows that the                                                                                
                 compounds are aromatic polyimides.                                                                                                     
                                                                         -4-4                                                                           





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