Appeal No. 2006-1262
Application No. 10/013,543
examiner needs to specifically indicate which polymers located
and what parts of the respective reference would result in
appellants' adhesive comprising the claimed polymer and which
reactions take place in doing so.
We refer to the case of In re Meyers. In re Meyers states
a prima facie case exists where there is overlap. We instruct
the examiner to relate her fact finding to this case.
In summary, we therefore remand this case to the
jurisdiction of the examiner to specifically point out which
reaction schemes and which monomers and in what location in
Winslow and Kazuhiro that the teachings exist that would arrive
at appellants' claimed invention. Again, it appears to us that
appellants' point made, for example, in the Reply Brief, on
pages 3 through 8 is that Winslow and Kazuhiro do not anticipate
the claimed invention because, in fact, polymers are produced
outside that of which is claimed by appellants. However, it is
possible that polymers are also produced within that which is
claimed by appellant. We instruct the examiner to in detail
relay the teachings of the references in this regard and also
explain how no picking and choosing would be necessary to choose
the particular monomer and a particular reaction scheme to
arrive at appellants' claimed invention.
The above equally applies to the 35 U.S.C. § 103 rejection
of claims 1 through 4 as being obvious over Ishiwata in view of
Kazuhiro.
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