Appeal 2007-4316
Application 09/911,268
superiority to the presence of the finely divided inorganic material F, which
is absent from comparative example 1. According to Eckel 930, component
F counteracts the deleterious effects of the organophosphate. (FF 16;
Eckel 930 at 13:45–58.) Moreover, the present inventors attribute a flame
resistance of V-1 to the presence of 9 w% IPP. (Specification at 3:14–16.)
Thus, the flame resistance value for Comparative example 1 in Eckel 930
may support a conclusion that IPP is present at a significant level, i.e., at a
level higher than 1 w%. We also recognize—as apparently did the Examiner
(Answer at 6)—that Dr. Eckel did not say what the IPP content of the
Eckel 930 D.1 compound was. This is a curious omission, since Dr. Eckel
was the first-named inventor on the Eckel 930 patent and presumably knows
or is in a position to determine the IPP content and the source of the D.1
compound. In view of these various facts that weigh for and against the
level of IPP in the Eckel 930 reference, and the incomplete record, we
decline to exercise our discretion under 37 C.F.R. § 41.50(b) to enter a new
ground of rejection. Instead, we leave the development of these issues to the
Examiner and Applicants in the first instance.
D. Summary
In view of the record and the foregoing considerations, it is:
ORDERED that the rejection of claims 1–17 under 35 U.S.C.
§ 102(e), alternatively under 35 U.S.C. § 103(a) over Eckel 930 is
REVERSED;
FURTHER ORDERED that the rejection of claims 1–17 under
35 U.S.C. § 102(b) over Gaggar is REVERSED; and
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