Appeal No. 1998-2653
Application No. 08/656,681
We reverse the examiner's rejections of the appealed
claims under 35 U.S.C. § 112, first and second paragraphs, for
the reasons set forth in appellant's Brief. The examiner has
not met the initial burden of demonstrating with objective
evidence or scientific reasoning that one of ordinary skill in
the art would not understand the meaning of the claimed step
"curing." Also, the examiner has not met the initial burden
of establishing that one of ordinary skill in the art would be
unable to practice the claimed invention, including the
claimed curing method and treated talc, without resorting to
undue experimentation. Also, since the examiner states at
page 4 of the Answer that "[t]he MSDS for 'Talc Texas 4411'
makes it clear that this is the proper name of the material,
and therefore is not new matter," we consider the examiner's
rejection under § 112, first paragraph, stated at page 4 of
the final rejection, to have been withdrawn.
We now turn to the examiner's § 103 rejections. We agree
with appellant that Viksne, the primary reference for all the
rejections, fails to disclose or suggest the claimed step of
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