Appeal 2007-2082
Application 10/795,457
The Examiner contends that the term “such as” renders the scope of
the claims indefinite since it is not clear what other polymerization means or
methods are within the claimed scope (Answer 4).
The Examiner contends that the phrase “without a polymerization step
such as heating” is new matter because Appellant’s Specification only
requires this omission “when used to make models” (Answer 5).
The Examiner contends that Wada, Morrell, and Hoshino all disclose
or suggest the claimed components, with Wada and Hoshino adding the
ingredients in a different order than required by claim 1 on appeal, while
Morrell teaches the same order of adding the ingredients (Answer 10-12).
The Examiner further contends that mixing the same ingredients in any order
would have been an obvious choice to one of ordinary skill in this art, absent
any showing of criticality (Answer 12).
Accordingly, the issues presented from the record in this appeal are as
follows: (1) could one of ordinary skill in this art ascertain the scope of the
phrase “without a polymerization step such as heating?”; (2) does Appellant
provide support in the originally filed Specification for this phrase?; and (3)
does Wada, Morrell, or Hoshino disclose the same method of adding the
claimed ingredients, or methods varying only in the order of addition of
ingredients, to make a molding material?
We determine that the Examiner has not established that the claimed
language is indefinite in scope, or that the disputed phrase fails to find
support in the originally filed Specification, essentially for the reasons stated
in the Brief and those reasons set forth below. Therefore we REVERSE the
rejections based on § 112. We determine that the Examiner has established
a prima facie case of obviousness in view of the reference evidence, which
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