Appeal No. 2003-1010
Application 09/357,393
The examiner relies upon Yamada only for a teaching that
forming an alginate by reacting alginic acid with an organic
base is not novel (answer, page 8). Yamada’s alginic acid salt
is a component of a heat-developable color light-sensitive
material (col. 4, lines 16-26). The examiner has not explained
why Yamada would have fairly suggested, to one of ordinary skill
in the art, reacting alginic acid with an organic base to render
the alginic acid less hydrophilic. Nor has the examiner set
forth any other reason why one of ordinary skill in the art would
have been led by Doublier and Yamada to combine their teachings
relied upon by the examiner.
The examiner, therefore, has not carried the burden of
establishing that the applied prior art itself would have fairly
suggested the appellant’s claimed invention to one of ordinary
skill in the art. The record indicates that the examiner used
the appellant’s specification as a template for piecing together
the disclosures of the applied prior art to arrive at the
appellant’s claimed invention, which is improper. See Fritch,
972 F.2d at 1266, 23 USPQ2d at 1784. Accordingly, we reverse the
examiner’s rejection.
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007