Appeal No. 95-3484
Application 08/098,236
teaching or any other teaching in Biswell would have led one
of ordinary skill in the art to prepare Stearns’ copolymers,
which are to have properties which render them suitable for
use as a lubricating oil, such that they have a Q value of no
more than 3 as recited in appellants’ claim 1 or no more than
2.8 as recited in appellants’ claim 42.
The examiner argues that due to the similarities of the
processes for preparing the Biswell and Stearns copolymers,
the properties of Biswell’s copolymers having Q values of 3-6
are
inherent in Stearns’ copolymers (answer, page 7). It appears
that the examiner is arguing that Biswell indicates that the Q
value of Stearns’ copolymers can be 3, which is within the
range recited in appellants’ claim 1. The examiner’s argument
is not persuasive because the examiner has not explained why
the teachings of Stearns and Biswell would have led one of
ordinary skill in the art to prepare any Stearns’ copolymer
such that it has a Q value of no more than 3.
If a copolymer such as that of Stearns reasonably appears
to be the same or substantially the same as appellants’
-7-7
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