Appeal No. 1996-1529
Application No. 08/233,219
[combined] process would succeed because the catalysts are not newly invented, rather they are both
known to initiate polymerization of the identically disclosed and presently claimed monomers” (answer,
page 11, last para.).
As a preliminary matter, we note that appellants have argued claims 6-11 and 13-19 as a single
group (brief, page 5). Insofar as the method claims and the product claims present separate issues of
patentability and in accordance with 37 C.F.R. § 1.192(c)(5)(1993), we select claims 6 and 17 as
representative of the method and product claims, respectively, and decide the appeal on the basis of
claims 6 and 17 alone.
As to method claim 6, Wardle discloses that an alcohol in combination with a Lewis acid forms
an “initiator adduct” which is capable of initiating polymerization of cyclic ether monomers, not that
alcohol independently initiates polymerization. Since Wardle does not disclose that the alcohol per se is
a catalyst, the examiner’s analysis is factually incorrect. Secondly, the examiner has not provided
reasons why one of ordinary skill in the art would have selected the particular triethyloxonium
tetrafluoroborate catalyst of Farooq’s background discussion (as opposed to Farooq’s inventive
catalyst, e.g., a triethoxonium salt having an at least partially fluorinated hydrocarbylsulfonato metallate
counterion) from the cited prior art references for combination in the manner claimed. Third, as pointed
out by appellants, the catalytic reactions of Wardle and Farooq proceed by distinctly different reaction
mechanisms (brief, page 8). Although the examiner opines that “[t]he prior art recognizes that catalysts
can be combined” (answer, page 10), the examiner has not pointed out and we do not find where the
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