Appeal No. 2005-1247
Application No. 09/963,423 Page 7
a range, as here claimed. On the other hand, the examiner
(answer, pages 5 and 6) takes the position that:
Firstly, the position is taken that the claimed lower
endpoint of about 1 micrometer encompasses particle
size below 1 micrometer (1,000 millimicrons).
Secondly, the particles sizes of Reiff et al. are not
confined to 50 to 500 millimicrons. It is noted that
Reiff et al. (‘482) recite a range endpoint of about
800 millimicrons (see column 10, line 51); this
endpoint, in and of itself, is considered to be
encompassed by appellants’ claimed about 1 micrometer.
Furthermore, the references do not require that the
particles fall within the recited ranges; rather, the
particle diameter is defined as the diameter at which
50% of the particles are above and 50% of the particles
are below. In view of this definition, the position is
taken that it is reasonable to conclude that
approximately 50% of the particles of Reiff et al.
(especially Reiff et al. (‘482)) have a particle size
that meets the claimed range endpoint of about 1
micrometer.
The difficulty we have with the examiner’s position is that
the examiner has not established that average diameters of the
already dispersed particles referred to in the Reiff patent
represents a description of “a solid, pulverulent, water-
dispersible, blocked polyisocyanate adduct having particle
diameters of from about 1 to 1000 :m” as required by the rejected
claims. In particular, we note that while individual particles
of the dispersion of the applied references can be considered to
be a solid adduct as alleged by the examiner, the appealed claims
require that the solid product includes multiple particles as
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