Appeal No. 2002-1622 Page 7
Application No. 08/735,836
292-293 (Fed. Cir. 1983). Appellants point to the specification at page 17, lines 30-31 which
states: “In addition, compositions having very different properties can be obtained depending on
the method used [, i.e. solvent-less or solvent-based].” This statement does not, in the absence
of objective evidence commensurate in scope with the claims, establish that there is, indeed, a
difference between the mixture of Birkholz and the claimed mixture.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 38-42 which has not been sufficiently rebutted by
Appellants.
Written Description
The Examiner rejects claims 50-57 under 35 U.S.C. § 112, ¶ 1 because these claims lack
written descriptive support in the original specification. Specifically, the values “at least 15 wt%
(claim 50) and “at least 29 wt%” (claim 51) are said to lack support (Answer at 3).
There is no dispute that the ranges “at least 15 wt%” and “at least 29 wt%” are not
recited in the specification. In fact, Appellants themselves state that “[t]he entire application,
with the exception of the Examples, is silent as to the wt% of polymer(a) and/or polymer (b).”
(Brief at 6). Nor do Appellants rely on any specific recitation of wt% in the Examples as
providing support. Rather, Appellants argue that “[i]n light of the absence of any mandated ratio
of polymer (a) to polymer (b) in the disclosed mixture, and the vast array of articles which may
be manufactured from the mixture, the application as filed conveys to persons skilled in the art
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