Appeal No. 2007-0491
Application No. 10/495,074
2. ANTICIPATION
Claims 17-25 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Satoshi.1 The Examiner argues that Satoshi “discloses a curable
composition comprising the first monomer (designated in the reference as C)
. . . and the second monomer (designated in the reference as A),” which “can
be formed in[to] optical components by curing the composition, expressly
listing optical lenses and disks as possible end products. See [0040].”
(Answer 3.)
The Examiner also argues that “the mercapto compounds disclosed in
[Satoshi] are not excluded from the claimed compositions by the transitional
phrase ‘consisting essentially.’” (Id.) In particular, the Examiner argues
that the above-quoted statement on page 2 of the specification regarding the
object of the invention “is a clear indication [of] what is considered to be the
basic and novel characteristics” of the invention. (Answer 5.) The
Examiner argues that “[w]hile some of the characteristics of any
composition would be affected by the presence of ANY additional
component, addi[ng] mercapto compound clearly does not affect the
characteristics regarded by the applicants as basic and novel characteristics
of the claimed compositions as evident from the discussion in paragraph
[0026] of the supplied translation.” (Answer 5-6.)
We conclude that the Examiner has set forth a prima facie case that
claim 17 is anticipated by Satoshi. Satoshi describes a resin composition
1 Satoshi et al., Japanese Patent Document No. JP 11-223703, published Formatted: French (France)
August 17, 1999. The record contains an English-language abstract, a
partial translation, and a full computer-generated translation of Satoshi. We
cite to each of these documents at different points.
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