Appeal No. 2002-1364 Page 6
Application No. 09/402,761
partial ester; and (c) combining the catalytically active mixture with the emulsifier
mixture, with vigorous stirring. Nor has the examiner established that the cited prior art
discloses or suggests a process of forming an emulsion/dispersion containing particles
having a mean diameter from 10 to 60 :m. Although the examiner relies heavily on
Yamamoto's Example 2, nonetheless, the examiner does not and cannot point to any
disclosure in that example suggesting the specific order or sequence of combining
reagents spelled out in claim 11.
The examiner refers to MPEP § 2144.04 IV. C. "and the case law cited therein"
(Paper No. 14, page 6, last paragraph), but does not specifically apply the facts and
holding of any reported case to the facts before us. In this regard, we invite attention to
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959), cited in MPEP § 2144.04 IV. C. In
Rubin, the difference between the claimed method and closest prior art was said to be
"reversing the order of steps" (id., at 442). But the posture of the case presented to the
merits panel in Rubin was different from the case presented before us. As stated id. at
441-42:
appellant has not attempted to refute the examiner's position that it is not
inventive to change the order of steps. In fact, appellant concedes that
the same product is obtained by either the method claimed herein or that
claimed in the patent. Moreover, appellant, on page 5 of the brief, states
that:
"The method described in the patent is considered the better
of the two methods invented, but the method set forth in the
instant case does perform satisfactorily."
In the case before us, applicants make no such concession. Applicants argue that the
relationship between the process recited in claim 11 and the process disclosed by
Yamamoto in Example 2 involves more than simply "reversing the order of steps;" and
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