Appeal No. 2000-1832
Application 08/868,736
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). Indeed, the examiner has not established that
one of ordinary skill in this art following the teachings of Penzel or Pak-Harvey would have
prepared the redispersible addition-polymer powder by the claimed process encompassed by
appealed claims 32 and 33, or would have prepared the product obtained by the claimed process
encompassed by appealed claims 32 and 33 as claimed in appealed claim 59 by a different
process. See generally, In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985);
In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103-04 (CCPA 1976) (“These claims are cast
in product-by-process form. Although appellants argue, successfully we have found, that the
[reference] disclosure does not suggest . . . appellants’ process, the patentability of the products
defined by the claims, rather than the processes for making them, is what we must gauge in light
of the prior art.”). Accordingly, we reverse the grounds of rejection under § 103(a) over Penzel
and Pak-Harvey.
We now arrive at the ground of rejection of claim 33 under § 103(a) over Shulze.
Appellants point out that “[t]he polymer powder of this reference contains in addition to a base
polymer . . . polyvinylalcohol which has deplasticizing properties” and “[a]s an option . . .
[contains] cement-plasticizing agents” which are “added before the spray drying process” as seen
from Schulze Example 2 (brief, pages 6-7). Appellants contend that the “negative effect . . . on
the content of coagulum and the flow-behavior of the ready to use mortar mixtures” of adding
both the deplasticizing and plasticizing assistants to the aqueous addition-polymer dispersion
before drying is shown in the specification by a comparison of compositions “P3 and P4,” in
which all ingredients are present in the aqueous dispersion as in Schulze Example 2, with
compositions “P2 and P3,” in which it appears that a plasticizing assistant is added to the
aqueous dispersion and a deplasticizing agent is added to the dried intermediate powder.1 We
1 We observe that the repeated amending of specification page 20, line 44, has resulted in the
lines 43-44 reading “P2: As P1, but on completion of the spray drying 3% by weight, based on
T2, of drying assistant T2 in a finely divided solid.” However, it is clear that “P1” is an addition-
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