Appeal No. 2002-0519 Page 5
Application No. 09/668,959
thickened oil-in-water emulsion.. [Paper No. 7, page 4, last paragraph].
We are at a loss to understand how the examiner proposes modifying the
subject matter of Lin, per the teachings of Gregoire and Fecht, to arrive at any individual
claim on appeal. Rather, the rejection appears to constitute a "shotgun" application of
the prior art.
For example, in identifying differences between the claimed invention and Lin,
the examiner states that "[t]he reference [Lin] fails to teach . . . adding the silicone
polyether to the aqueous phase" (Paper No. 7, page 3, second paragraph). But this
makes little sense when we consider composition claim 1, which does not recite adding
silicone polyether to the aqueous phase. By the same token, the examiner states that
"[t]he reference [Lin] fails to teach . . . adding a polymerization catalyst" (id.). Again,
this bears little relationship to composition claim 1 which does not recite adding a
polymerization catalyst.
In focusing on Lin's failure to teach "adding the silicone polyether to the aqueous
phase" or "adding a polymerization catalyst," it may be that the examiner has claim 19
in mind. The record is unclear on this point, but we note that claim 19 recites, inter alia,
(i) preparing an aqueous phase containing water, a silicone polyether
surfactant, and optionally one or more organic surfactants;
(ii) preparing an oil phase comprising a non-silicon atom containing
unsaturated organic monomer;
(iii) combining the aqueous phase and the oil phase;
(iv) adding a polymerization catalyst to the combined phase
Assuming arguendo that the examiner has claim 19 in mind, nevertheless, we find that
the examiner has not adequately explained why it would have been obvious to
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