Appeal No. 2003-0870 Page 4
Application No. 09/046,740
page 6 disclose a maximum slurry temperature of 80°C and lines 6-8 on specification
page 9 disclose a maximum slurry temperature of 56°C. Plainly, these disclosures
would convey to an artisan that the inventors had possession on the application filing
date of the now claimed subject matter wherein the maximum slurry temperature is
defined as “at least 56°C and not more than 80°C” (step (d) of claims 7 and 9). See In
re Wertheim, 541 F.2d 257,265, 191 USPQ 90, 98 (CCPA 1976) which was cited by the
appellants.
For the above stated reasons, we cannot sustain the examiner’s § 112, first
paragraph, rejection of claims 2-7 and 9-11.
We also cannot sustain the examiner’s § 103 rejection of all appealed claims as
being unpatentable over Schulenburg, Gajewski, Krulik and optionally in view of
Cooper. As properly argued by the appellants, “the Examiner has failed to show how
the combined references teach features (a) through (j) of independent claims 7 and 9,
and the additional features recited in dependent claims 3-6 and 10-11" (Brief, page 7).
Indeed, the appellants are unquestionably correct in their criticism that “[t]he Examiner
continues to address only certain limitations of the claims without even attempting to
show that the prior art teaches the invention as a whole” (id). In light of these
deficiencies on the examiner’s part, it is apparent that his § 103 rejection would not be
sustainable even if each of the examiner’s aforequoted conclusions of obviousness
were assumed to be correct.
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