Appeal 2007-3386
Application 10/375,889
amended claim language of claims 1 and 8. As pointed out above, the
Specification Example only identifies a copolymer including all of the
following monomers: butyl acrylate, ethyl acrylate, acrylonitrile, acrylamide,
itaconic acid, and N-methylolacrylamide. Thus, the Examiner has identified
that the amended claim language added after filing of the Application
Specification includes subject matter that, prima facie, involves a new
concept, which Appellants have not persuasively rebutted with the
argumentation and Specification passages and Example referred to in the
Brief. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed.
Cir. 1996).
On this record, we affirm the Examiner’s § 112, first paragraph
rejection of the appealed claims for lack of the requisite written descriptive
support in the Specification, as filed.
§ 103(a) Rejections
Appellants argue the rejected claims as a group with respect to the
Examiner’s first started obviousness rejection over Fukushima taken with
Ohta. Thus, we select claim 1 as the representative claim on which we
decide this appeal as to the obviousness rejection over Fukushima taken with
Ohta. Furthermore, Appellants present the same arguments against the
Examiner’s rejection of dependent claim 6 over the combined teachings of
Fukushima taken with Ohta and Mead as presented for the first stated
rejection (Br. 8). Thus, the principal issues before us are the same for both
of the Examiner’s rejections.
These issues are: Have Appellants identified reversible error in the
Examiner’s obviousness position by asserting that: (1) Fukushima does not
disclose or suggest using micro-sphere polymer particles having at least two
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