Appeal No. 95-3484
Application 08/098,236
claimed copolymer, then the burden shifts to appellants to
provide evidence that the prior art copolymer does not
necessarily or inherently possess the relied-upon
characteristics of appellants’ claimed copolymer. See In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980);
Best, 562 F.2d at 1255, 195 USPQ at 433-34; In re Fessmann,
489 F.2d 742, 745, 180 USPQ 324, 326 (CCPA 1974). The reason
is that the Patent and Trademark Office is not able to
manufacture and compare products. See Best, 562 F.2d at 1255,
195 USPQ at 434; In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972).
The Stearns copolymers and the method of making them are
similar to those of appellants. The preferred Stearns
copolymers have an ethylene content of about 40-60 mol% (col.
10, lines 8-10), which is essentially the same as that recited
in appellants’ only independent claims, i.e., claims 1 and 42,
and have a molecular weight in the 300-4000 range (col. 5,
lines 13-16; col. 6, lines 55-57), which is within the range
-8-8
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