Appeal No. 2006-1262
Application No. 10/013,543
that provides a terminal pendent grouping a side chain and
refers to Type 3 of Winslow. The examiner states that neither
Kazuhiro nor Winslow exemplifies, mentions or suggests using
monomers that would provide side chains having more than one
terminal double bond as set forth in the Possible Structure 1 or
side chains containing internal as well as terminal double bonds
as set forth in Possible Structure 2 of appellants' arguments on
pages 10, 11, and 14 of the Brief. Answer, page 7.
Pursuant to 37 CFR § 1.104, found on page 700-19 of the
MPEP (8th ed., Rev. 3, August 2005) in rejecting claims for one
of novelty or for obviousness, the examiner must cite the best
references at his or her command. When a reference is complex
or shows or describes inventions other than that claimed by the
applicant, the particular part relied on must be designated as
newly as practicable. The pertinence of each reference, if not
apparent, must be clearly explained and each rejected claim
specified.
The dominant argument throughout appellants' Brief and
Reply Brief is that Kazuhiro teaches an adhesive comprising a
polymer outside that which is described in appellants' claim 1.
Appellants also provide the same arguments with respect to
Winslow. It appears to us that within the broad disclosure of
Winslow or Kazuhiro, there is disclosed a product that falls
within as well as without the subject matter claimed by
appellants. In light of this, we instruct the examiner to
specifically list what monomers and reactions (similar to the
manner as set forth on pages 4 though 7 of appellants' Reply
Brief) demonstrating a polymer that is encompassed by the
polymer disclosed in appellants' claim 1. In doing so, the
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