Appeal No. 1998-3115
Application No. 08/384,520
The examiner has not pointed out where there is support
in the specification or the prior art for interpreting the
claims to mean that components (B)(c) and (A) either must be
different or can be the same. Nor has the examiner cited
authority for the proposition that during patent prosecution,
claims can be narrowed by mere attorney argument.
Accordingly, we conclude that the examiner has not carried the
burden of establishing a prima facie case of indefiniteness.
Consequently, we reverse the examiner’s rejection under 35
U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 103
The examiner argues that EP ‘813, EP ‘589 and JP ‘258
would have fairly suggested the appellants’ components (B)(a)
and (B)(c) to one of ordinary skill in the art, but that these
references do not disclose or suggest the appellants’
amorphous propylene polymer (A) (answer, page 5). For a
suggestion of this component the examiner relies upon Canich
(answer, page 6). 2
2The examiner relies upon Okazaki only for a further
demonstration that it was preferred in the art to use a high
molecular weight amorphous ethylene/propylene copolymer which,
the examiner argues, corresponds to the appellants’
6
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