Appeal No. 2000-1832
Application 08/868,736
[Citation omitted.]”); In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979) (the
claimed subject matter must be compared with the closest prior art in a manner which addresses
the thrust of the rejection); In re Blondel, 499 F.2d at 1317, 182 USPQ at 298 (the indirect
evidence provided a reliable indication of the performance of the closest claimed and prior art
compounds).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in Schulze with appellants’ countervailing
evidence of and argument for nonobviousness and conclude that the claimed invention
encompassed by appealed claims 33, 35, 37, 38, 40 through 48, 50 through 54, 56 through 59
and 61 through 63 would have been obvious as a matter of law under 35 U.S.C. § 103(a).
Turning now to the ground of rejection of appealed claim 43 under § 112, second
paragraph, we find it clear from the plain language of appealed claim 43, as interpreted in light
of the written description in the specification, see, e.g., Morris, supra, that, as pointed out by
the examiner (answer, page 3), hydrolyzed polyvinylacetate, a deplasticizing assistant, “is
mixed into the dried addition-polymer powder,” which is a step of the claimed process
encompassed by appealed claim 32 but not of the claimed process encompassed by appealed
claim 33. Thus, we agree with the examiner’s conclusion that claim 43 is improperly in the
lineage of appealed claim 33 (id.), and, accordingly, affirm this ground of rejection.
In summary, we affirm the grounds of rejection of appealed claim 43 under 35 U.S.C. §
112, second paragraph, and of appealed claims 33, 35, 37, 38, 40 through 48, 50 through 54, 56
through 59 and 61 through 63 under 35 U.S.C. § 103(a) as being obvious over Schulze, and
reverse all other grounds of rejection.
The examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
- 9 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007