Appeal No. 2000-0459
Application 08/838,584
For the reasons discussed in section II a., supra, we find
that appellants’ showing is representative of the claimed subject
matter. We find that to the extent Caselli makes obvious
appellants’ claimed subject matter, appellants’ showing
adequately rebuts this prima facie case.
Our dissenting colleague does not address the “reach” of the
prior art. Where, as here, the examiner established a prima
facie case of obviousness based on the teachings of Caselli, but
not Seltzer or Bohshar, appellants need only supply rebuttal
evidence sufficient to rebut that prima facie case. In this
regard, our dissenting colleague’s analysis of the rebuttal
evidence is incomplete. Also, our dissenting colleague does not
deny that appellants’ rebuttal evidence compares against the
closest prior art and addresses the thrust of the rejection.
III. 35 U.S.C. § 112, second paragraph (indefiniteness)
The examiner rejects claim 24 for including “oxygen” in the
definition of the terminal group R. The examiner asserts that
this is unclear as written because an oxygen atom by itself
cannot be a terminal group. The examiner states it must be bound
to another atom. (Paper No. 7, page 4).
On pages 7-8 of the brief, appellants refer to several
references in an attempt to show that the substitution claimed by
appellants is appropriate and is well understood by those skilled
in the art. Appellants assert that the examiner has merely
argued that such compounds are only theoretically possible and
that the oxyl radical would likely be bound to another group when
it is in the appellants’ composition.
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