Appeal No. 2005-0930 Page 9
Application No. 09/965,792
organic solvent/plasticizer of that invention. These compounds are set forth on page 23
of the specification as being examples of the second organic solvent of this invention.
Finally, we direct attention to Example 1 of Leuridan that describes a nail varnish
which comprises an aqueous polymer dispersion (JONCRYL SCX-8211), diisobutyl
adipate which is one of the exemplified second organic solvents of the present invention
and propylene glycol n-butyl ether and dipropylene glycol n-butyl ether which are
exemplified in the present specification as being the first organic solvent.
Upon return of the application, the examiner should take a step back and review
Leuridan in its entirety and determine its effect on the patentability of the claims pending
in this application. The examiner should pay special attention to the nail varnish
composition set forth in Example 1 of Leuridan that contains compounds which meet the
requirements of the first and second organic solvents of claims 1 and 9. What is not
clear from the record is whether the polymer and aqueous dispersion used in Example 1
meets the relationship Tg - MFT $ 8°C required by the claims in this application. In this
regard, it may be reasonable for the examiner to shift the burden to appellants to
establish by objective evidence whether the specific polymer used in Example 1 of
Leuridan meets this aspect of the present claims under the principles set forth in In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
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