Appeal 2007-1224
Application 10/628,725
linked dienes are incorporated into the diene block.” (Specification 7:3-5).
The Concise Encyclopedia also supports the finding (Concise Encyclopedia,
second headed “Microstructure”). But Lühmann contains no specific
disclosure of selective hydrogenation of one type of linked diene within the
D block over another type of linked diene. All Lühmann states is that the D
blocks “can be partially, selectively or completely hydrogenated.”
(Lühmann, col. 3, ll. 48-50). While it is possible that one might, in
following the process of Lühmann, end up hydrogenating 1,2-links
selectively over 1,4-links, the Examiner has not established that such
necessarily occurs as a natural result flowing from following the process of
Lühmann. Appellant’s Specification states that “a selective hydrogenation
of the terminal and hence more reactive double bonds is possible”
(Specification 7:8-9 (emphasis added)), but, again, this is a merely
possibility, and it implies that one must select some particular conditions in
order for it to occur. The Examiner has neither identified the reaction
conditions that are necessary to selectively hydrogenate the 1,2-linked diene
of Lühmann nor provided evidence or technical reasoning showing that
those conditions are necessarily present in the process of Lühmann.
The Examiner has not established that the 1,2-linked diene of
Lühmann is selectively hydrogenated as required by all the claims.
The Examiner also notes that “even if other moieties besides the
fraction of 1,2-linked diene which is selectively hydrogenated are present in
the adhesive composition this fact is simply irrelevant in view of the fact that
all of his claims are opened ended.” (Answer 4). We agree that the claim is
open to the inclusion of other ingredients in the adhesive by virtue of the
transitional phrase “comprised of.” However, to the extent the Examiner is
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