Appeal No. 2004-2208
Application No. 10/158,988
alternative, 35 U.S.C. § 103(a) for the reasons well stated in
the answer.1
35 U.S.C. § 112, ¶1
The examiner’s position is stated as follows (answer at 3-
4):
The claims are directed to a process for making a
polyurethane/urea in the presence of a catalyst that
“promotes linear polymerization but does not cause
degradation”. In claim three, the appellant narrows
the catalyst to metal salts or soaps of monocarboxylic
acids or napthenic [sic, naphthenic] acid, and claim
four lists twelve metals. In the disclosure, the
appellant names only two specific catalysts - zinc and
calcium octoate - that will perform according to the
claims, and one catalyst, dibutyltin dilaurate, that
won’t. In order to determine which catalyst to use,
one of ordinary skill would have to undergo undue
experimentation of making up batches of
polyurethane/urea and testing their properties. Claim
four encompasses about 200 possible catalysts and even
encompasses dibutyltin dilaurate, which the appellant
shows, in comparison example 8, to make a fiber with
poor tenacity.
1 With respect to the rejection under 35 U.S.C. § 102(b) or
35 U.S.C. § 103(a), the appellants submit that “[c]laims 16 and
17 do not stand or fall with [c]laims 15, 18, 20 and 21.”
(Appeal brief filed Apr. 8, 2004, p. 3.) We therefore select
claims 15 and 16 from these two groups of claims and decide this
appeal as to the examiner’s alternative grounds of rejection on
the bases of these two selected claims. 37 CFR §
1.192(c)(7)(2003)(effective Apr. 21, 1995). Also, prior to an
allowance, the examiner should reconsider whether claim 19
should be rejected on this ground.
4
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