Appeal 2006-2269
Application 10/051,938
“Reasons for Allowance” in the prosecution history, we surmise that
independent claim 53 and its dependent claims 79-80 were allowed because
the polyol was limited to “trimethylolpropane.”
Dependent claims 40, 56, 70, 78, 82 and 84 all recite that the hindered
polyol is “trimethylolpropane.” Claims 40, 56, 70, 78, 82 and 84 are all
rejected under § 103(a) over Duncan in view Funkhouser. At least in the
case of claim 40, the “hindered polyol” of claim 38 is limited to
“trimethylolpropane”, such that the scope of claim 40, which depends on
claim 38, is identical to allowed claim 53. Since at least claim 40 is rejected
under § 103(a) over Duncan in view of Funkhouser, it appears that claims 53
and 79-80 which require “trimethylolpropane” as the polyol should be
rejected similarly.
Duncan appears to teach a biodegradable polyol ester made from a
trimethyolpropane and a mixture of C7 and C8 linear monocarboxylic acids
(See, Table 8, “TMP/7810”). Based on Duncan’s teaching to use the
disclosed fluids as hydraulic fluids, it would have been prima facie obvious
to combine Duncan’s “TMP/7810” fluid with Funkhouser’s conventional
hydraulic shock absorber to create a more environmentally friendly shock
absorber.
From the foregoing, the allowed claims 53 and 79-80 appear to be
unpatentable under § 103(a) over Duncan in view of Funkhouser.
Therefore, upon return of this application to the jurisdiction of the
Examining Corps, the Examiner must determine whether claims 53 and 79-
80 are unpatentable over Duncan in view of Funkhouser under 35 U.S.C.
§ 103(a) and make this determination of record consistent with current
examining practice and procedure.
13
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013