Appeal No. 1999-1418
Application No. 08/418,847
cannot sustain the examiner’s section 112, first paragraph,
rejection of these claims. 1
As for the section 103 rejection, we fully share the view
expressed in the answer and in the prior Board decision on
Appeal No. 93-2412 for parent application Serial No.
07/569,179 that the Winter reference establishes a prima facie
case of obviousness with respect to the here claimed subject
matter notwithstanding the appellants’ opposing viewpoint.
See, for example, Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989).
As rebuttal evidence of nonobviousness, the appellants
proffer the showings in their specification and in the Dolle
declarations executed February 24, 1995 and September 8, 1995.
1According to 37 CFR § 1.75(d)(1), application claims
must conform to the invention as set forth in the remainder of
the specification and the terms and phrases used in the claims
must find clear support or antecedent basis in the description
so that the meaning and terms in the claims may be
ascertainable by reference to the description. Therefore,
upon return of this application to the examiner’s
jurisdiction, the examiner should consider objecting to the
claim 23 phrase “ethylene-ethylene” as failing to conform with
the language of the subject specification and correspondingly
should require the appellants to change the claimed phrase
“ethylene-ethylene” to the specification phrase “ethyl-
ethylene” so as to eliminate the aforementioned nonconformity.
4
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