Appeal 2007-2082
Application 10/795,457
Claims 1, 3, 5, 6, and 13 stand rejected under 35 U.S.C. § 112, first
paragraph, “as the specification as originally filed does not provide support
for the invention as now claimed” (Answer 5).1
Claims 1, 3, 5, 6, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wada, Morrell, or Hoshino (Answer 7).2
Appellant contends that the disputed phrase “without a polymerization
step such as heating” has support on page 5 of the Specification (Br. 3 and
5).3
Appellant contends that Wada discloses formation of a hydraulic
powder which is then moistened, Morrell suggest that the polymeric organic
substance is added before/after the hydration of the “stone,” and Hoshino
does not teach preparation of a moistening solution containing PTFE to be
added to a gypsum-containing material (Br. 5-6).
1 The Examiner also bases this rejection on 35 U.S.C. § 132, but this section
relates to the introduction of new matter into the Specification, not the
claims.
2 We note that each of the Examiner’s rejections also included claims 7, 9-
12, and 15 (Answer 4, 5, and 7). However, as discussed above, claims 7, 9-
12, and 15 are not before this merits panel for review in this appeal (Br. 1-2).
Accordingly, we also do not review the rejection of claims 7, 9-12, and 15
under § 102(b)/§ 103(a) over Horiuchi (Answer 6). We note that the
Examiner inadvertently included claim 13, which depends on method claim
1, in the rejection over Horiuchi (id.). From the Examiner’s statement on
page 7 of the Answer, it is clear that Horiuchi was not meant to be applied
against any method claims. Therefore, on this record, we do not consider
claim 13 as rejected over Horiuchi.
3 Appellant also requests that the Amendment after the final rejection be
entered if all art rejections are “deemed inappropriate” (Br. 3). However, the
Examiner’s refusal to enter the proposed Amendment is not reviewable in
this proceeding. See In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568
(CCPA 1967); see also In re Hengehold, 440 F.2d 1395, 1403, 169 USPQ
473, 479 (CCPA 1971).
3
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