Appeal No. 1997-3621
Application 08/094,392
(Fed. Cir. 1990), or of obviousness, see, e.g., In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985), of these product-by-process claims. See Id.
The dispositive issue in this appeal is whether, as a matter of fact, the appealed claims which, as
seen from independent product-by-process claims 1, 13 and 22, are drawn to a hyperbranched
aromatic polyester polymer having at least 40% branching, encompass the branched poly(m-
hydroxybenzoate) polymers having a molecular weight ranging from 10,000 to at least 28,900, and
prepared from the bi-functional monomer 3-trimethylsiloxylbenzoy chloride and the tri-functional co-
monomer 3,5-bis(trimethylsiloxyl)benzoyl chloride in a mole ratio, wherein the monomer ranges from 20
through 160 and the co-monomer is no more than 1, that are disclosed in Nos. 1 through 4 in Table 7
of Kricheldorf (see pages 1827-29), but for which the percent branching is not disclosed. The
examiner “takes the position that said degree of branching would be inherent in the prior art”
compositions because said tri-functional monomer is encompassed by the appealed claims; the reaction
temperature is within the range set forth in claim 1; a gaseous by-product is generated as set forth in
claim 1; and the molecular weight falls within the appealed claims (answer, pages 6-7). Appellants
submit that the examiner has not shown how the branched polymers of Kricheldorf meet the “key 40%
branching limitation” and point out that the polymers are “primarily a linear polymer using a linear A-R-B
monomer,” which is said bifunctional monomer, as “only minor mounts of A-R-B2 co-monomer,” said
tri-functional monomer, are used; that it has not been shown that there is any correspondence between
molecular weight and branching; and that ¶ 6 of the Frechet declaration shows that the possible degree
of branching of a polymer in Table 7 of Kricheldorf, regardless of molecular weight, is much less than
40% (brief, pages 2 and 6-7).2 With respect to the Frechet declaration, the examiner merely concludes
that the “opinionated declaration submitted does not lead one of ordinary skill in the art to an
independent decision of there being a showing of clear and convincing unexpected results” without
explaining this position vis-à-vis the evidence in ¶ 6 of the Frechet declaration (answer, page 8).
2 The Frechet declaration was filed in the present application on July 19, 1994 (Paper No. 19).
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