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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