Appeal No. 2004-2257
Application No. 09/841,486
Suzuki, however, does not clearly and unequivocally disclose the
claimed subject matter. To arrive at the claimed subject matter,
a person having ordinary skill in the art must select specific
proportions of specific hydrophilic solid powders falling within
the generic teachings provided by Suzuki. The resin foams
exemplified in Suzuki, for example, are not produced by using a
thermoplastic resin containing the claimed proportion of a
hydrophilic thermoplastic resin. See columns 7-13, Examples 1-6.
To remedy this deficiency in Suzuki’s examples, one of ordinary
skill in the art must not only be able to envisage a hydrophilic
thermoplastic resin from the large list of hydrophilic solid
powders provided at column 2, lines 51-66, of Suzuki, but also be
able to readily select the claimed proportion from Suzuki’s
disclosed proportions based on the end uses different from that
disclosed by the appellants. Compare Suzuki, column 5, lines 23-
37 and column 7, lines 7-16, with the specification, page 4-7.
As stated in Arkley, such picking and choosing of ingredients and
proportions to arrive at the claimed subject matter have no place
in the making of a Section 102 anticipation rejection.3
3 On this record, the examiner has not established that one
of ordinary skill in the art would have been motivated to use the
claimed proportion of the fine hydrophilic thermoplastic resin in
the articles taught by Suzuki since Suzuki does not teach using
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007