Appeal 2006-2238
Application 10/168,709
Therefore, the Examiner finds that all the claim limitations have been
disclosed by the reference (Answer 4-5). We disagree.
As correctly argued by Appellants, Berendee “fails to say anything
about crosslinking whatsoever” (Br. 10). Claim 1 on appeal expressly
requires “subjecting said starting support matrix to … gamma-ray radiation
to effect crosslinking” (step (b) of claim 1, underlining added). Although
Berendee teaches use of a starting support matrix with pendent unsaturated
groups, the Examiner has failed to establish that the dosage of radiation
taught by Berendee is sufficient “to effect crosslinking” as required by claim
1 on appeal. Therefore, we determine that the Examiner has not established
that crosslinking would have inherently occurred in the process of Berendee.
See In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed.
Cir. 1999). Accordingly, we cannot sustain the Examiner’s rejection based
on Berendee.
Pursuant to the provisions of 37 C.F.R. § 41.50(a)(1)(2004), we
REMAND this application to the jurisdiction of the Examiner. The
Examiner and Appellants should determine, in view of our claim
construction and remarks above, whether the radiation dosage taught by
Berendee (2x108 to 3x109 roentgens; see Translation 2) would be sufficient
to cross-link the styrene-divinyl benzene copolymer starting support
material, i.e., whether this dosage unit is comparable to the dosages taught
by Park or claimed by Appellant (e.g., see claim 3 on appeal). Accordingly,
the patentability of the claims should be reviewed in light of these
determinations.
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