Ex Parte Hale et al - Page 9

                Appeal 2007-2234                                                                                   
                Application 09/950,477                                                                             
                  has increased stability over a wider pH range which broadens the scope of                        
                  practical uses" as taught by the incorporated Iler (id., 9).                                     
                       E.     Appellants' position                                                                 
                       In essence, Appellants argue that Miranda, when considered in its                           
                entirety, teaches away from use of latex-free compositions and that the                            
                Examiner has misinterpreted Examples 1-4 in Miranda  (Corrected Appeal                             
                Brief, filed 21 September 2006, "Appeal Br.," 8-12; Reply Brief, filed 13                          
                February 2007, "Reply Br.," 5-8).  Appellants also point out that the latex-                       
                free examples in Miranda contain an "unnamed silica sol" (Appeal Br., 11;                          
                Reply Br., 8).  Finally, Appellants rely on a previously submitted                                 
                Declaration by Bo Larsson ("Larsson Declaration," executed 15 October                              
                2004) as evidence of unexpected results using the claimed invention (Appeal                        
                Br., 9-10; Reply Br., 10).                                                                         
                       F.     Analysis                                                                             
                       First, we agree that the Examiner has mischaracterized the disclosure                       
                in Miranda.  For example, the latex-free formulations in Examples 1-4 are                          
                not "non-preferred embodiments" of Miranda's anti-skid composition                                 
                precisely because they do not contain any latex (Miranda 4:1 to 5:28;                              
                14:4-8).  Thus, formulations (1) and (2) of Example 1 represent                                    
                compositions of the prior art vis-à-vis formulation (3) which represents a                         
                composition according to Miranda.  Formulation (3) of Example 1, which                             
                contained latex, showed higher antiskid properties than the other two                              
                formulations because it had less of a slide angle loss through the winder.                         
                The Examiner's interpretation of Example 3 in Miranda failed to                                    
                acknowledge that formulation C, which contained an alcohol additive,                               



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