Appeal 2006-1305
Application 10/236,270
claim 1 and its dependent claims, however, further include the limitation of
“high heat resistance and cold resistance.” See In re Kaslow, 707 F.2d 1366,
1373, 217 USPQ 1089, 1094-95 (Fed.Cir.1983) (in an obviousness
determination, the claimed invention must be considered as a whole).
The phrases “high heat resistance and cold resistance” are defined in
the Specification as “the ability to maintain an acceptable fiber tearing bond
at elevated temperatures of about 125°F, preferably 140°F” and “the ability
to maintain a high strength bond in the cold with no tendency to fracture at
40°F (4°C), preferably 0°F.” Specification 9. The Examiner concluded,
without further explanation, that Watanabe discloses a hot melt adhesive
having high heat resistance and cold resistance. It is unclear from the record
whether the Examiner actually looked to the Specification to ascertain the
meaning of “high heat resistance and cold resistance” and then determined
that these claim features, as interpreted in light of the Specification, were
inherent in the applied prior art.2 While the Examiner may require an
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on, see In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-34 (CCPA 1977), the Applicant must clearly be
on notice that the Examiner views such characteristic as inherent in the prior
art, thereby providing an opportunity for the Applicant to prepare a
competent response.
2 The Examiner does state that Watanabe would intrinsically have a heat
resistance equal to or greater than 140°F as recited in claim 8. Final
Rejection 4.
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