Appeal No. 2002-1643 Page 11
Application No. 09/140,700
The examiner's response (answer, p. 8) to this argument by the appellant was
the same as set forth above with respect to claims 1, 7 and 13 (i.e., a recitation of the
intended use of the claimed invention must result in a structural difference between the
claimed invention and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable of performing the
intended use, then it meets the claim.).
Independent claim 24, just like independent claims 1, 7 and 13, clearly recites
the "solvent limitation" as part of the claimed invention and not as the intended use of
the claimed invention. As such, the examiner has not correctly ascertained the
differences between the prior art and claim 24. In that regard, based on our analysis
and review of Murphy and claim 24, it is our opinion that one difference is the above-
noted "solvent limitation." Since the examiner has not set forth any rationale in the
rejection of independent claim 24 before us in this appeal as to why it would have been
obvious at the time the invention was made to a person of ordinary skill in the art to
have utilized a cleaning liquid selected from the group consisting of isopropyl alcohol,
MPK, MEK, acetone, naphtha and aromatic hydrocarbons to impregnate the towels in
Murphy's envelope, a prima facie case of obviousness has not been established.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007