Appeal No. 1998-1006
Application No. 08/499079
case of In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA
1966).
In In re Tomlinson, the claim at issue was directed to
a process of inhibiting degradation of polypropylene caused
by exposure to light, comprising admixing one of a genus of
compounds, including nickel dithiocarbamate, with
polypropylene. A reference taught mixing polypropylene
with nickel dithiocarbamete to lower heat degradation.
[emphasis added] The court held that the claims read on
the obvious process of mixing polypropylene with the nickel
dithiocarbamate and that the preamble of the claim was
merely directed to the result of mixing the two materials
[emphasis added]. “While the references do not show a
specific recognition of that result, its discovery by
appellants is tantamount only to finding a property in the
old composition, not in the nickel compound for which, it
is argued, a new use has been found”. 363 F.2d at 934, 150
USPQ at 628. The court ruled the process claims
unpatentable by reason of their reading on the admixture of
polypropylene and nickel dithiocarbamate, an old mixture.
Applying this same analysis to the present case, we
can state that the preamble of appellants’ claim
(tackifying a hot melt thermoplastic composition) is merely
directed to the result of mixing two materials (mixing a
polyester material comprising greater than 5 mole-% of
lactic acid having a molecular weight (Mn) less than about
30,000 grams per mole and Tg less than 110°C with a
thermoplastic). However, the instant case is
distinguishable from In re Tomlinson in that it has not
been shown by the examiner that the applied references can
in fact achieve the result of tackifying a hot melt
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