Appeal No. 1999-1878 Page 5
Application No. 08/799,411
product or of process between the claimed invention and the
prior art.
The appealed claims require a resin composition
including, inter alia, a polyacetal having the property of
generating a concentration of formaldehyde of not more than
about 500 parts per million upon heating at about 230 °C for
about 30 minutes and a method of preparing such a resin
composition. Here, the examiner has not established that one
of ordinary skill in this art would have been led to a resin
composition including a polyacetal within the scope of the
appealed claims or process of making same based on the
teachings of the applied references. With regard to the
claimed limitation concerning the polyacetal having a property
of generating a concentration of formaldehyde of not more than
500 ppm when the resin is heated at about 230 °C for about 30
minutes, the examiner does not specifically point out where
the combined teachings of the references would have led one of
ordinary skill in the art to a resin composition having a
polyacetal with such a property together with the other
claimed limitations. Rather, the examiner merely offers an
unsupported opinion that “... the prior art is well aware that
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