Appeal No. 2001-0061 Page 3
Application No. 08/720,851
OPINION
This rejection cannot be sustained.
The pivotal issue on this appeal relates to the claim limitation “wherein the
amounts of said (b), (c) and (d) are such that a homogeneous composition is obtained
in the absence of said (b)” which is recited in each of the independent claims before us.
According to the examiner, “[t]his limitation is presumed to be inherently possessed by
the Examples [i.e. Examples 13 and 15 of Ramesh] or rendered prima facie obvious by
these examples given that the amounts of the salts to be incorporated disclosed in the
specification at pages 18 and 19 overlap those percentages as shown in the prior art.”
(Answer, page 4). We cannot agree.
The examiner’s above quoted position relating to inherency is not without some
rational basis. Nevertheless, we share the appellants’ fundamental viewpoint that the
examiner’s unpatentability position is unconvincing. In particular, we believe (1) that the
multivalent anionic salt of Ramesh performs the intended function of insolubilizing or
depositing patentees’ cationic polymer in his aqueous solution of the polyvalent anionic
salt and (2) that such a function is antithetical to the unpatentability position of the
examiner.
This belief is supported by substantial evidence in the record of this appeal
including the Ramesh patent itself, the Takada ‘655 patent as well as various examples
in the appellants’ specification. However, the evidence which most clearly supports this
belief constitutes the disclosure which appears on lines 42-43 in column 6 of Ramesh
wherein patentee teaches that his “multivalent anionic salt [is] used to deposit the
polymer in the present invention.” This disclosure, particularly when considered in
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