Appeal No. 1998-3242
Application No. 08/700,133
disclosed separately from the adduct used by Kamio as his latent
hardener or curing agent (e.g., see lines 27-30 in column 1).
Under the circumstances, it is evident that the examiner has
inappropriately considered patentee’s additional hardener to be
equivalent to and therefore suggestive with respect to the amount
of a latent curing agent of the type disclosed by Bagga and
claimed by the appellants.
Moreover, we find no support for the proposition that it
would have been obvious to modify Bagga’s adhesive composition so
as to result in a cure temperature and, upon cure, a flexible and
reworkable epoxy bond as required by the independent claim on
appeal. We here emphasize that the claim 1 recitations
concerning cure temperatures and the provision of a flexible and
reworkable epoxy bond define properties of the appellants’
claimed adhesive which cannot be ignored. This is because, in
determining obviousness, we must first delineate the invention as
a whole which involves not only the subject matter which is
literally recited in the claim but also the properties of this
subject matter. In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8
(CCPA 1977). Also see In re Papesch, 315 F.2d 381, 391, 137 USPQ
43, 51 (CCPA 1963)(from the standpoint of patent law, a compound
and all of its properties are inseparable).
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