Ex Parte Hayes - Page 15

                 Appeal 2006-0990                                                                                     
                 Application 10/209,369                                                                               
                 aliphatic-aromatic copolyetherester polymers in the Warzelhan references                             
                 results in the same mole percent diacid and sulfonate residue ranges in the                          
                 polymer product as generically claimed in appealed claim 1.  Indeed, the                             
                 Examiner has not explained how the evidence establishes that, as a matter of                         
                 fact, the reaction mixtures generically disclosed in the Warzelhan references                        
                 reasonably appear to one skilled in this art to expressly or inherently result in                    
                 the identical generic polymer product as the polymer product invention                               
                 generically specified in appealed claim 1 as I have interpreted this claim                           
                 above.  Cf. Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58 (“The Board                              
                 held that the compositions claimed by Spada ‘appear to be identical’ to those                        
                 described by Smith. While Spada criticizes the usage of the word ‘appear’,                           
                 we think that it was reasonable for the PTO to infer that the polymerization                         
                 by both Smith and Spada of identical monomers, employing the same or                                 
                 similar polymerization techniques, would produce polymers having the                                 
                 identical composition.”).                                                                            
                        The issues in this appeal do not involve whether either or both of the                        
                 Warzelhan references describe a single polymer embodiment falling within                             
                 appealed claim 1.                                                                                    
                        Accordingly, I find that the Examiner’s duplicative statement of the                          
                 grounds of rejection (Answer 3-5) has not established even the minimum                               
                 factual underpinning for a prima facie case of anticipation under the                                
                 provisions of 35 U.S.C. § 102(b) on this basis alone.  See, e.g., Spada, 911                         
                 F.2d at 708-09, 15 USPQ2d at 1657-58.                                                                
                        Therefore, in the absence of a prima facie case of anticipation, I                            
                 concur with the majority of this panel that the decision of the Examiner must                        
                 be reversed.                                                                                         

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