Appeal 2006-2238
Application 10/168,709
stated in the Answer, as well as those reasons set forth below. We
REVERSE the rejection based on Berendee essentially for the reasons stated
in the Brief and those reasons set forth below. Additionally, pursuant to the
provisions of 37 C.F.R. § 41.50(a)(1)(2004), we REMAND this application
to the jurisdiction of the Examiner for action consistent with our remarks
below. Accordingly, the decision of the Examiner is AFFIRMED-IN-
PART.
OPINION
A. The § 102(b) Rejection over Park.
The Examiner finds that Park discloses production of gels and
biocompatible substrates by electron beam radiation2 of a polymer
functionalized with a plurality of unsaturated groups, where the
functionalized polymer is obtained by a “functionalization reaction” for
introducing double bonds into a polyelectrolyte polysaccharide (Answer 3).
The Examiner finds that these process steps taught by Park anticipate
Appellants' production method (id.). We agree.
Implicit in any analysis of the Examiner’s anticipation rejection is that
the claims must first be correctly construed to determine the scope and
meaning of any contested limitations. See Gechter v. Davidson, 116 F.3d
1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). The Examiner
2 Although the Examiner is technically correct that Appellants discuss Park
on page 2 of the Specification as using electron beam radiation (Answer 3;
Specification 2, ll. 25-28), we note that the Examiner later correctly finds
that Park actually teaches the use of gamma radiation (Answer 5; see Park,
Abstract 1). We also note that Appellants concede that Park does teach
electron beam radiation to form a polymeric matrix (Br. 5, last two lines). In
view of our discussion below, we find the Examiner’s error harmless.
3
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