Appeal 2006-1219
Application 10/636,148
We have reviewed the first Office action mailed August 19, 2004 and
are unable to find any reasonably specific, coherent statements addressing
the claim 1 limitations regarding a crosslinked polymeric bead having “a
diameter no greater than 200 µm” and “less than 5 weight percent of organic
extractables.”
With respect to the claim limitation of the bead diameters, Meitzner
discloses producing “compolymer [sic, copolymer] beads with a diameter
ranging from about 0.35 [or 350µm] to about 1.2 mm [or 1200 µm]” (col.
10, ll. 3 to 9). Given the fact that Meitzner expressly teaches bead diameters
substantially outside Appellants’ claimed upper diameter limit of 200 µm,
there is no apparent reason (and the Examiner certainly has not proffered
one) as to why a person with ordinary skill in the art would have modified
the teaching of Meitzner to produce beads with diameters of “no greater than
200 µm.”
With respect to the claim 1 limitation that the crosslinked polymeric
bead is to have “less than 5 weight percent of organic extractables,” we note
that Meitzner is silent as to the amount of organic extractables present in the
polymeric bead. It follows that there appears to be no reason (and the
Examiner offers none) as to why one of ordinary skill in the art would
modify the teaching of Meitzner to produce beads with “less than 5 weight
percent of organic extractables,”
Finally, the Examiner’s obviousness position regarding these claim
features is unacceptable to the extent it is impermissibly based on a
retrospective view of inherency as explained above. Newell, 891 F.2d at
901, 13 USPQ2d at 1250.
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