Appeal No. 2003-1561 Page 11
Application No. 09/632,840
column 6, lines 41-51 and column 15, lines 1-36 of Cook. As
evident by a review of page 6, lines 4 through 22 of appellants’
specification, the above-noted gum ingredients of the applied
references correspond to appellants’ animal digestible elastomer.
Hence, appellants’ second point raised in contention with
the examiner’s determination as to the correspondence of each of
the applied references’ disclosures to the subject matter of
representative claim 20 is essentially limited to the argument
that each of the applied prior art references do not explicitly
disclose that their gums possess the claimed stickiness and
conformational functional characteristic (brief, page 12 and
reply brief, pages 2 and 3).3
In a case such as this where the critical limitation for
establishing novelty in the claimed subject matter is recited as
a functional characteristic that reasonably appears to be a
characteristic of the prior art gums insofar as broadly called
for in the representative appealed claim based on the
correspondence in composition between the claimed gum and the
applied prior art gums, it is incumbent upon appellants to prove
3 We consider the propriety of the examiner’s rejections in
light of the arguments made by appellants in the brief. See
37 CFR § 192(a).
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007