Appeal No. 2002-1229
Application No. 09/140,809
coating paper or for any purpose other than as an intermediate in
forming patentee’s ultimate water-insoluble graft copolymer.
In light of the foregoing, it is apparent that the
examiner’s rejection is improper. That is, if the examiner’s
obviousness conclusion is predicated on using Maslanka’s
ultimate, water-insoluble, graft copolymer as a coating on the
printed paper of Kado, the rejection would be improper because
the method resulting from this combination would not include the
here claimed step of coating with a “cationic, water-soluble
polymer” of the type defined by appealed independent claim 1. On
the other hand, if the examiner’s obviousness conclusion is
predicated on using Maslanka’s cationic, water-soluble,
prepolymer as a coating for the printed paper of Kado, the
rejection is improper because the applied prior art including
Maslanka contains no teaching or suggestion that this prepolymer
is useful as a coating for printed paper.
Under the circumstances recounted above, it is apparent that
the only teaching or suggestion for combining the applied
references in such a manner as to achieve the here claimed
invention derives from the appellants’ own specification rather
than the applied prior art. It follows that we agree with the
appellants’ argument that the examiner’s rejection is improperly
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