Appeal No. 2005-2678
Application 09/992,110
The references relied on by the examiner are:
Didwania et al. (Didwania) 4,725,682 Apr. 5, 1988
Milding et al. (Milding) WO 96/06222 Feb. 17, 1996
(published World Intellectual Property Organization Application)
The examiner has rejected appealed claims 1 through 27 under 35 U.S.C. § 103(a) as
being unpatentable over Didwania in view of Milding (supplemental answer,1 pages 3-4). The
examiner has further provisionally rejected appealed claims 1 through 27 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable over claims
1 through 20 of copending application 10/012,768, and over claims 1 through 20 of copending
application 10/012,766 (supplemental answer, page 4).
Appellants group the appealed claims as claims 1 thorough 16 and claims 17 through 27,
and present argument as to claim 1 and claim 17 with respect to the grounds of rejection under
§ 103(a) (amended brief, pages 4, 8 and 9).2 Appellants address the claims in the second ground
of rejection as a group (brief, pages 9-10). Thus, we decide this appeal based on appealed claims
1 and 17 as representative of the grounds of rejection and appellants’ groupings of claims.
37 CFR § 41.37(c)(1)(vii) (September 2004).
We affirm the provisional grounds of rejection under the judicially created doctrine of
obviousness-type double patenting, and reverse the ground of rejection under § 103(a).
Accordingly, the decision of the examiner is affirmed.
We refer to the supplemental answer and to the amended brief and reply brief for a
complete exposition of the positions advanced by the examiner and appellants.
Opinion
The dispositive issue in this appeal is whether one of ordinary skill in this art would have
found in the combined disclosures of Didwania and Milding, teachings and inferences which
would have led this person to use “bonded fibrous materials comprising synthetic fibrous
material” as required by the claimed method encompassed by appealed claim 1 that are disclosed
by Milding in place of the latex bonded broke or paper containing latex in the method for
recovery of cellulosic fibers which are not separated from the latex in the method disclosed by
1 We consider the supplemental answer mailed June 20, 2005.
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