Appeal 2006-1543
Application 10/239,769
however, also respond by indicating that they would be willing to change
“against” to “proximate” in claim 31 to address the deficiency.
The question of whether the Examiner made an untimely new ground
of rejection is not one we will address here. Appellants’ remedy was by way
of petition under 37 C.F.R. § 1.181(a). No such petition having been filed,
the allegation is waived. See MPEP § 1207.03(IV).
As found by the Examiner, there is no support for the heated belt
running against the surface of the base web. The heated belt runs against the
coating or treatment agent on the web.
New Ground of Rejection
It is unclear to us why the 35 U.S.C. § 112, ¶ 1, rejection was limited
to claims 15, 21, 30-34, 36, and 37. All of the pending claims include the
limitations found to violate the written description requirement. We,
therefore, extend the rejection to claims 16-20. Therefore, claims 15-21,
30-34, 36, and 37 are now rejected as violating the written description
requirement of 35 U.S.C. § 112, ¶1.
The Obviousness Rejection
The Examiner also maintains a rejection against claims 15-20 and
30-32 as unpatentable as obvious under 35 U.S.C. § 103(a). The Examiner
relies upon Lehtinen and Soremark as evidence of obviousness.
We conclude that the Examiner has not established a prima facie case
of obviousness based on Lehtinen and Soremark. As a first matter, claim 15
requires that the treatment agent have a solids content of not less than 80%.
The Examiner acknowledges that the treatment layer of Söremark appears to
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