Appeal 2006-1305
Application 10/236,270
Appellants argued, inter alia, that “[t]he combined disclosures of
Watanabe and Daughenbaugh fail to suggest a hot melt adhesive formulation
having high heat resistance and cold resistance” (Br. 5). It is unclear from
the record whether Appellants are asserting that the Examiner has not met
the burden of showing that the prior art discloses or suggests a hot melt
adhesive formulation having “high heat resistance and cold resistance” as
defined in the Specification, whether they are alleging unexpected results,
see In re Woodruff, 919 F.2d at 1578, 16 USPQ2d at 1936 (applicant may
overcome prima facie showing of obviousness by showing “that the claimed
range achieves unexpected results relative to the prior art range”), or
whether they are making a general statement. In other words, Appellants do
not precisely identify the error(s) in the Examiner's rejection.
“High polar content” and “low polar content:” In order to make a
proper comparison between the claimed invention and the prior art, the
Examiner must first construe the language of the claims. See In re Paulsen,
30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Because the
Examiner’s interpretation of “high polar content” and “low polar content” is
not apparent from the record, it is impossible to determine whether
Appellants are aware of the Examiner’s interpretation and have been
afforded an opportunity to present evidence to rebut the Examiner’s position
or to amend the claims, all of which include these limitations, to more
clearly delineate the scope of the invention. See Gechter v. Davidson,
116 F.3d 1454, 1460, 43 USPQ2d 1030, 1035 (Fed. Cir. 1997) (requiring
explicit claim construction as to any terms in dispute).
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