Appeal No. 2001-2345 Page 6
Application 08/898,627
addition of a base to a crosslinked polyacrylic acid as required by the claims on appeal.
The factual support for this portion of the examiner's position is unclear. In any event,
the examiner's position, regardless of its correctness, does not take into account the
subject matter of the claims as a whole.
Each claim requires that the water dispersible gel have a specific pH, a storage
modulus (G') and a Tan *. The examiner's conclusion that "[t]he compositions in the
end are the same" lacks factual support. At best, the examiner asserts "[a]s to the
claimed modulus, and Tangent Delta, the obvious composition must inherently possess
such a property because the composition is the same as that claimed." (Paper No. 19,
page 3). First of all, it is unclear what the examiner considers to be the "obvious
composition." It is clear from the specification of this application that not every gel
formed of a crosslinked polyacrylic acid, will have the storage modulus G' and Tan *
values required by the claims on appeal as appellants' description of the present
invention in the specification envisions gels having values for these parameters outside
the claimed ranges. Specification, page 4, lines 2-12. Nor do we find the examiner's
cryptic statement that Bashaw is relied upon to apparently show that one could
determine the Tan * of the '185 polymers, Answer, page 4, to be enlightening. The
examiner has not pointed to any specific composition described in '185 which would
provide a reasonable basis for appellants to test in order to determine the inherent
properties thereof. It appears that just as not all of the gels according to the present
invention necessarily have the claimed properties, it does not appear that all of the gels
described in '185 will have those properties. Rather, from this record, it appears that
one must judiciously select among the myriad gels described in '185 and select those
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