Appeal No. 2005-0930 Page 5
Application No. 09/965,792
present invention at page 22 of the specification while Mondet states that these two
compounds may be used as the plasticizer in that invention.
Thus, Mondet does set forth among the plasticizers useful in that invention
compounds that can be used as the first and second organic solvents in claims 1 and 9
on appeal. In stating the rejection, the examiner determined that “[w]hile Mondet claims
the use of at least one plasticizer [claim 18], the reference lacks specifically claiming
two plasticizers . . . . ” Paper No. 8, page 6.
The argument made by appellants is centered on whether Mondet fairly teaches
the use of two plasticizers that meet the requirements set forth in claims 1 and 9 for the
first and second organic solvents. Specifically, appellants argue that “the Office has not
shown that motivation exists in Mondet to pick and choose ingredients to result in a very
specific combination of (1) a first organic solvent with a molecular weight less than or
equal to 200 and a boiling point, measured at ambient pressure, ranging from 100°C to
300°C, (2) a second organic solvent with a molecular weight greater than 200 and a
boiling point, measured at ambient pressure, greater than or equal to 120°C, and (3)
particles of at least one polymer with specific physical properties as presently claimed.”
Appeal Brief, page 5.
In our view, the dispositive issue is whether Mondet fairly teaches or suggests
picking from the list of plasticizers described in the reference, at least one that meets
the claim requirements for the first organic solvent, and at least one that meets the
claim requirements for the second organic solvent. The examiner’s position in this
regard is two-fold. First, the examiner notes that Mondet “specifically claim[s] a
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