Appeal No. 2000-0346
Application No. 08/868,353
Druschke et al. (Druschke) 4,529,772 Jul. 16, 1985
Mirle et al. (Mirle) 5,500,470 Mar. 19, 1996
Wierer et al. (Wierer) 5,508,100 Apr. 16, 1996
Claims 32-33 stand rejected under the second paragraph of 35 U.S.C. § 112 for
failing to particularly point out and distinctly claim the subject matter which the appellant
regards as his invention.
All of the claims on appeal stand rejected under 35 U.S.C. § 103 as being
unpatentable over (1) De Long in views of Wierer or Druschke or Mirle and (2) alternatively
over Wierer or Druschke or Mirle in view of De Long.
We refer to the brief and reply brief and to the answer for a complete discussion of
the opposing views expressed by the appellant and by the examiner regarding the above-
noted rejections.
OPINION
We cannot sustain any of these rejections for the reasons set forth below.
Considering the section 112, second paragraph, rejection, the examiner expresses
his position on page 4 of the answer in the following manner.
Specifically, the Examiner[‘]s position is that claim 32, while purporting to
define an adhesive composition, rather instead constitutes an article
by-process claim ie [sic] this claim is held/seen to be an improper hybrid in
that the preamble thereof is inconsistent with the remainder of the claim, and
it is unclear whether applicant[’]s intent is to claim a composition or an
article; further along this line, composition claims should not contain
limitations drawn to (a) process steps, as in claim 32, or (b) substrate
materials, as in claim 33 (which depends from claim 32).
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