Appeal No. 96-2407
Application 08/072,210
teachings and his initial burden to establish a prima facie
case of unpatentability under 35 U.S.C. § 103, the examiner
cites
In re Durden, 763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985), in
support of unpatentability under section 103. The examiner
argues (Examiner’s Answer, p. 4):
Although both Lundberg and Boessler disclose processes
involving different block and/or graft copolymers, the
process used is an obvious process for making a
dispersion
of the claimed block copolymer because the Boessler and
Lundberg processes would be expected to work for other
starting materials such as claimed styrene-diene
copolymers in view of the fact that Boessler does not
place any specific limitations on the Tg of the core
polymer. The starting material, therefore, is an obvious
choice to the one skilled in the art for making a
dispersion
of that starting material. In re Durden, [supra] . . . .
The rejection finds no per se rule support from Durden. “When
the references cited by the examiner fail to establish a prima
facie case of obviousness, the rejection is improper and will
be overturned.” In re Ochiai, 71 F.3d 1565, 1569, 37 USPQ2d
1127, 1131 (Fed. Cir. 1995). Here, as was the case in Ochiai,
at 1570, 37 USPQ2d at 1132 (footnote omitted):
[T]he examiner incorrectly drew from Durden, a case
turning on specific facts, a general obviousness rule:
namely, that a process claim is obvious if the prior
art references disclose the same general process using
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