Appeal No. 2001-2486
Application 08/670,885
accordance with claim 1.2 See id. Since the definition of a hot
melt is “a thermoplastic material useful as an adhesive which is
in the solid state at room temperature, but melts when the
temperature rises” (Appeal Brief, page 5, citing page 1, lines 7-
9 of the specification), Grillo’s liquid concentrate cannot
anticipate the claimed hot melt composition.
The examiner maintains that if the Grillo et al composition
tested by Dr. Bilmers was not in a solid state and was not a hot
melt, then the claimed composition cannot be in the solid state
and cannot be a hot melt when formulated in accordance with claim
1 using 30% starch and 70% glycerin. Id.; see, supra, note 2.
We find the examiner’s position more akin to the type of
argument presented in a rejection under 35 U.S.C. § 112, first
paragraph. However, enablement is not the issue before us.
Rather, the issue is whether Grillo discloses a hot melt
composition containing starch and glycerin in amounts which
satisfy the claim 1 limitations. The test is not, as proposed by
the examiner, whether Grillo teaches a composition comprising 30%
starch and 70% glycerin.
2
2Dr. Bilmers utilized a mixture of 30% starch, i.e., the
maximum amount of solids recited in claim 1, and 70% glycerin.
Appeal Brief, page 6.
5
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