Appeal 2006-1219
Application 10/636,148
Accordingly, we can not sustain the rejection of claims 6, 8 and 9
under 35 U.S.C. § 103(a) as being unpatentable over Meitzner for the
reasons discussed above.
We now direct our attention to independent claim 1.
Like claim 10, claim 1 recites a crosslinked polymeric bead having
“no void spaces having a diameter greater than 5 µm.” We have already
addressed the Examiner’s contentions regarding this claim limitation and
have found them unpersuasive for reasons given above.
In addition, Claim 1 also recites that the crosslinked polymeric bead is
to have “a diameter no greater than 200 µm” and “less than 5 weight percent
of organic extractables.”
Appellants argue that “[t]hese limitations [a bead diameter no greater
than 200 µm and less than 5 weight percent of organic extractables] . . . are
not suggested by Meitzner, and . . . they are not even mentioned in the final
rejection, or the first rejection, [and that] the Office has not met its burden of
demonstrating that the prior art teaches or suggests all the limitations of
claim 1” (Br. 6).
The Examiner responds:
[C]ontrary to the applicants[’] allegations . . . ,
those limitations were addressed in the first office
action and the reasons for rejections stated in the
first office action were incorporated in the final
office action. Moreover, the original office action
provided reasonable basis why the claimed
limitations are inherently met by the product
disclosed in Meitzner and shifted the burden to the
applicants to provide clear evidence to the contrary
[Answer 7].
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