Appeal No. 2004-2219 Page 3
Application No. 09/927,009
OPINION
Appellant indicates that the claims stand or fall together and focuses his arguments on
claim 1. Our main focus, therefore, will be on claim 1, the sole independent claim.
With regard to the rejection under 35 U.S.C. § 102(e), we agree with Appellant that
Graham does not describe the method of claim 1 with a degree of specificity sufficient to render
the claim anticipated. Rather, some picking and choosing from various unrelated disclosures
within the reference would be necessary to meet the requirements of the claim. Such picking and
choosing points to obviousness rather than anticipation. See In re Arkley, 455 F.2d 586, 587, 172
USPQ 524, 526 (CCPA 1972). We, therefore, find that the Examiner failed to establish a case of
anticipation.
That being said, we agree with the Examiner’s conclusion of obviousness. The Examiner
establishes that Graham describes a method of forming a moisture reactive hot melt adhesive by
a two step approach involving first forming a prepolymer and then further reacting to obtain the
adhesive product as claimed (Answer, p. 4). As further established by the Examiner, the sole
difference between the method of Graham and the method of claim 1 is in the ranges of
molecular weight and concentration taught by Graham as compared to the ranges of the claim
(Answer, pp. 4-5). As established by the Examiner, the ranges of Graham overlap, or translate to
an overlap, with the ranges and ratios of the claim (Answer, pp. 4-5 and pp. 6-8). It is well
settled that a prima facie case of obviousness typically exists when the ranges specified in a
claim overlap the ranges disclosed in the prior art. E.g., In re Peterson, 315 F.3d 1325, 1329, 65
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