Appeal 2005-2547
Application 10/134,817
The Examiner’s finding of lack of written descriptive support is not
supported by a preponderance of the evidence. At best, the terminology
used in the claims lacks antecedent basis in the Specification. While a lack
of antecedent basis in the Specification may support an objection under 37
C.F.R. § 1.75(d)(1), see MPEP § 608.01(o), that alone does not support a
rejection for lack of written descriptive support.
C. Obviousness under 35 U.S.C. § 103(a)
Claims 17-22 are rejected under 35 U.S.C § 103(a) as unpatentable
over Venema in view of Landers.
The issue is: Has Appellant (1) shown that the Examiner’s basis for
the rejection is flawed or (2) overcome the rejection through a showing of
secondary indicia of nonobviousness? See In re Kahn, 441 F.3d 977, 985-
86, 78 USPQ2d 1329, 1335 (Fed. Cir. 2006) (“On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.”).
Appellant has not convinced us of a reversible error in the rejection
nor overcome the rejection with a showing of secondary indicia of
nonobviousness.
The following facts are supported by a preponderance of the evidence.
Venema is directed to an apparatus and process for dissolving water
soluble polymers and gums in water. The polymer may, for instance, serve
as a stabilizer for drilling muds (Venema, col. 1, ll. 11-16). The process
releases the polymer into water to produce an “activated solution,” i.e., a
swelled or thickened solution, that “can be readily employed for one or more
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