Appeal No. 2007-0168
Application No. 10/127,927
I. The Examiner’s statement of rejection is not clear
The statement of the ground of rejection based on DE 19816671
(hereinafter DE ‘671), JP 10286689 (hereinafter JP ‘689), United States
Patent 6,179,935 (hereinafter US ‘935), JP 10034376 (hereinafter JP ‘376),
and United States Patent 6,421,942 (hereinafter US ‘942) is the source of
confusion here (Answer 6). In the Final Rejection mailed November 2,
2004, the Examiner rejected claims 15, 18, 19, 21, 23-25, 27-29, 31-33, and
35 (hereinafter “claims”) under 35 U.S.C. § 103 as being unpatentable over
admissions in the paragraph bridging pages 2-3 of the instant
specification in view of [DE ‘671] ([JP ’689]; abstract (57, melting
temperature)), [JP ’376] . . . or [US ‘942] . . . .
Final Rejection 4.
In their Appeal Brief, the Appellants contend:
[Claims] are patentable over [DE ‘671], [JP ‘689], [JP ‘376] and [US
’942].
Br. 22.
In the Examiner’s Answer, the Examiner, for the first time, states:
[Claims] are rejected under 35 U.S.C. § 103 as being unpatentable
over prior art admission in paragraph bridging pages 2-3 of the instant
specification in view of [DE ‘671] ([JP ‘689]; abstract (57, melting
temperature) with English equivalent [US ‘935] . . . [JP ‘376] . . . or
[US ‘942].
Answer 6.
The Examiner’s statement of this ground of rejection in the Answer is
problematic in two ways. First, as is apparent from a comparison with the
Final Rejection, US ‘935 is introduced for the first time in prosecution of the
present application in the Examiner’s statement of rejection in the Answer.
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