Appeal 2007-0693
Application 10/188,519
1 811-812 (CCPA 1969) (“[I]t is proper to take into account not only specific
2 teachings of the references but also the inferences which one skilled in the
3 art would reasonably be expected to draw therefrom...”).
4 “When the PTO shows prima facie obviousness, the burden then shifts
5 to the applicant[s] to rebut.” In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d
6 1451, 1454 (Fed. Cir. 1997). “Such rebuttal or argument can consist of a
7 comparison of test data showing that the claimed compositions possess
8 unexpectedly improved properties or properties that the prior art does not
9 have...” In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed.
10 Cir. 1990)(en banc).
11
12
13 ANALYSIS
14 I. Written Description: Claims 5, 10, 15, and 20
15 The Examiner’s position is that “[t]he claims recite the binder
16 comprises –COO- Na+ or –COO- K+, which is not enabled by the
17 specification,” and “these groups are part of an intermediate product to
18 obtain the binder” rather than the binder itself. (Examiner’s Answer 2-3.)
19 We cannot affirm on these bases.
20 It is well settled that enablement and written description requirements
21 of 35 U.S.C. § 112, ¶1, are not necessarily coextensive and are, in fact,
22 independent. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 921,
23 69 USPQ2d 1886, 1891 (Fed. Cir. 2004), reh’g denied, 37 F.3d 803, cert.
24 denied, 543 U.S. 1015 (2004)(“Although there is often significant overlap
25 between the three requirements [of written description, enablement, and best
26 mode], they are nonetheless independent of each other.”). Even assuming
12
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013