Appeal 2007-1169
Application 09/850,857
Applicant contends that its claimed invention provides numerous
benefits as compared to prior art panels. (Br 14). Applicant states that the
claimed invention is unobvious over the prior art due to Applicant’s use of a
“multi-manifold coextrusion” process to form the claimed product.
Applicant states that it is known in the art that a “multi-manifold
coextrusion” process is distinct from the feedblock or flowblock technology
described in Heilmayr. (Br 16). Applicant makes the following statement in
response to the Examiner’s request to provide factual support for its
allegations regarding the differences between the prior art panels and the
claimed panels:
The Examiner has argued that Appellant has failed to provide
examples or factual support for the fact that the earlier
flowblock technology was unacceptable for purposes of the
present invention. However, Appellant would respectfully
submit that one is only required to provide an adequate written
description and "enabling disclosure" of the invention in the
Specification, and not to prove the efficacy of each detail of the
disclosure with actual experiments or numerical examples.
Appellant has explained in very clear language in the
Specification why the multi-manifold coextruder is required to
practice the claimed invention. The Examiner should not
require the Appellant to go farther.
(Br. 17).
Applicant misunderstands the Examiner’s position. The Examiner did
not reject Applicant’s claims as lacking enablement. Rather, the Examiner
requested that Applicant provide sufficient evidence to demonstrate that its
claimed product-by-process limitation effected the structure or chemistry of
the resultant product as compared to the prior art product. (Answer 7). The
Examiner’s position is supported by case law. See, e.g., Thorpe at 697, 227
14
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