Appeal No. 2000-0822
Application 09/037,555
claims 1, 39, 40, 49, 53 and 54 stand rejected under 35 U.S.C. § 102(b) as anticipated by Kawata;
claims 1, 39, 40, 49, 53 and 54 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Shintani;
claims 1, 39, 40, 49, 53 and 54 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kawata in view of Mammino and further in view of Creatura; and
claims 1 through 5, 8, 9, 13 through 19, 39, 40, 42 through 45, 47, 49 through 51, 53 through 55
and 57 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Shintani in view of
Yoshino.
We decide this appeal based on appealed claim 1, 2, 5, 49, 50, 51 and 53, which
respectively represent each of the seven groups of claims presented for consideration by
appellants (brief, page 4). 37 CFR § 1.192(c)(7) (1999).
We affirm the grounds of rejection under 35 U.S.C. §§ 102 (b) and 103(a) based on
Kawata, and reverse all other grounds of rejection.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief and reply brief for a complete
exposition thereof.
Opinion
Each of claims 49 through 51, rejected under § 112, first paragraph, written description
requirement, modifies the product claim on which it depends by requiring that “said pores [of the
carrier core] are free of solvent” or that “said pores [of the carrier core] contain no solvent,”
either statement specifying the absence of solvent. The examiner contends that “[a]lthough the
specification does describe an in-situ polymerization of monomer, the specification does not
disclose the pores as being in the condition now recited” in these claims (answer, page 4). The
examiner points to the process in the specification, alleging that “[i]t would appear that some of
the water [used in the process] would be present in the matrix of the partially polymerized
monomer” and that “[w]ater is a well known solvent,” stating that in any event, “the fact that a
component (i.e., solvent) is not disclosed in an example or the specification is not the same as
describing the exclusion [of] this component,” citing Ex parte Grasselli, 231 USPQ 393 (Bd.
App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir 1984) (answer, pages 10-11).
Appellants submit that “no solvent is used in the formation of the carrier” because “water
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