Appeal 2007-1174
Application 11/001244
The Examiner contends that O’Connor shows that the fixturing time
of the adhesive composition depends on the type of substrates, and
Appellant’s Specification does not reasonably provide enablement for the
fixturing time of the adhesive composition used between any two substrates
(Answer 3).
The Examiner contends that Gleave teaches the improved benefits of
using a vinylidene chloride-acrylonitrile (VAC) thickener in place of the
conventional poly(methylmethacrylate) (PMM) thickener (Answer 4 and 8-
9).
The Examiner contends that the claimed language “consisting
essentially of” does not exclude the accelerators of the applied prior art
references since Appellant has not shown that accelerators materially affect
the basic and novel characteristics of the claimed invention (Answer 8).
Accordingly, the issues presented in this appeal are as follows: (1)
would undue experimentation be required to practice the invention as
claimed?; (2) does the claimed language “consisting essentially of” exclude
the accelerators required by the applied prior art references?; (3) has a
motivation, reason, or suggestion been established for substituting the
thickener of Gleave for the thickener of Nishino?; and (4) does Appellant
show unexpected results sufficient to rebut any prima facie case of
obviousness?
We determine that the Examiner has not established that the
Specification disclosure requires undue experimentation to practice the
invention as claimed. Therefore, we REVERSE the rejection based on the
first paragraph of § 112, essentially for the reasons stated in the Brief and
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