Appeal No. 2005-1827
Application No. 10/227,761
Appellants further argue that Lesko does not teach a composition that is
formulated to reduce the wash related damage to shoes. (Brief, p. 22).
The “wash related damage” claim limitation describes a property resulting
from the components present in the composition. That is, the wash related
damage characteristic of the claimed invention is a result of the components
present in the composition. Lesko discloses aqueous compositions that comprise
acrylic syntans. As state above, the recitation of the newly discovered property
inherently possessed by a prior art composition, does not cause a claim drawn
to that composition to distinguish over the prior art. See In re Best, supra.
Appellants have not identified which components contained in the composition
of Lesko prevents the composition from providing the claimed property. We also
note that Appellants have not addressed which components in the composition
of Lesko prevents the compositions from being used to retan shoes.
To the extent that we rely on Lesko alone to establish the prima facie
case, we do not consider the rejection over Lesko alone to constitute a "new
ground" of rejection. The issue, in this respect, is whether Appellants have had a
fair opportunity to react to the thrust of the rejection. In re Kronig, 539 F.2d 1300,
1302-03, 190 USPQ 425, 426-27 (CCPA 1976). Limiting the discussion to the
evidence contained in Lesko while using the same basis and teachings as the
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