Appeal No. 1998-1671 5
Application No. 08/481,186
of the examiner based on Runge in view of Albanese. Rather, our decision has focused on
the vast scope of the claimed subject matter before us, and we have concluded based
thereupon that even the secondary reference to Albanese is sufficient in and of itself to
establish a prima facie case of obviousness with respect to the claimed subject matter.
Accordingly, we affirmed the decision of the examiner.
Finally, the appellants argue that In re Kronig, 539 F.2d 1300, 1302-03, 190
USPQ 425, 426-27 (CCPA 1976), limiting the discussion to the evidence contained in
Albanese while using the same basis and teachings as the examiner relied upon does not
constitute a new ground of rejection. See Kronig, 539 F.2d at 1303, 190 USPQ at 427;
In re Bush, 296 F.2d 491, 496, 131 USPQ 263, 266-67 (CCPA 1961), relied upon
by the Board is inappropriate. We disagree. The findings made by this merits panel were
essentially the same as those made by the examiner. See Answer, page 4, last two lines,
page 5, second and third paragraphs, and page 6, lines 1-6. In affirming the decision of
the examiner, we have relied upon essentially the same factual findings made by the
examiner in the Answer. The examiner recognized that Albanese was directed to a water
containing composition as did this merits panel. We relied on the same evidence and
findings made by the examiner. The sole distinction is that we focused on the water
containing composition of Albanese and recognized that in all other respects Albanese was
closer to the claimed subject matter disclosing each of the requisite components for the
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