Appeal 2007-1224
Application 10/628,725
Butadiene Polymers, Concise Encyclopedia of Polymer Science and
Engineering 97-98 (Jacqueline I. Kroschwitz ed., 1990)(Concise
Encyclopedia)
The Examiner rejects claims 1-16 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Lühmann as evidenced by the Concise Encyclopedia.2 The Examiner
rejects claim 17 under 35 U.S.C. § 103(a) as unpatentable over Lühmann.
II. DISCUSSION
The key dispute in this appeal is a dispute over whether the fraction of
1,2-linked diene in the self-adhesive composition of Lühmann would
inherently be selectively hydrogenated as claimed. The Examiner finds this
claim limitation inherently met by the disclosure in Lühmann at column 3,
lines 42-64. Appellant contends that “insofar as Lühmann refers to his D
blocks as being selectively hydrogenated, this would clearly be understood
by those of ordinary skill in the art to mean that some D blocks are
hydrogenated, and some are not.” (Br. 4). This is different than what is
claimed according to Appellant because “as defined by the independent
claim, it is the 1,2 linked diene that is selectively hydrogenated (i.e., all the
dienes are not hydrogenated; only the 1,2 linked diene).” (Br. 4).
2 The Examiner failed to include the Concise Encyclopedia in the statement
of the rejection, but relied upon it in the body of the rejection and also listed
it in the “Evidence Relied Upon” section of the Answer. Appellant was
aware of the Examiner’s reliance on the reference (Hearing, May 9, 2007).
We have considered it and we include it in the statement of rejection to
properly reflect its use as evidence in the rejection.
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