Appeal 2006-2729
Application 10/193,363
case of anticipation and of obviousness by showing that it reasonably
appears that the claimed product so defined is identical or substantially
identical to the prior art product. See, e.g., Spada, 911 F.2d at 708-09, 15
USPQ2d at 1657-58 (“[I]t 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.”). We fail to find evidence in
Hendrickson taken in light of the Examiner’s contentions which establishes
that the particles of the reference reasonably appear to be identical or
substantially identical to the claimed nanofluids containing precipitated
composite particles encompassed by claim 18.
Accordingly, in the absence of a prima facie case of nonenablement,
we reverse the ground of rejection of the appealed claims under 35 U.S.C. §§
102(b) and 103(a).
The Primary Examiner’s decision is reversed.
REVERSED
tf/hh
Paul A. Leipold
Patent Legal Staff
Eastman Kodak Company
343 State Street
Rochester, NY 14650-2201
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