Appeal No. 1999-0781 Page 3
Application No. 08/236,328
to the Examiner, discloses polyacetal and polyketal capped with monoalcohols having the required
number of carbon atoms (Answer at 3). The Examiner concludes that
it would be [sic: would have been] obvious to one of ordinary skill in the art to end
cap the Kelsey polyketal polyethers with monoalcohols having 9 to 15 carbons such
as decanol or dodecanol. The motivation is that Kelsey teaches end capping of the
claimed polyketal polyether and Lenke teaches end capping of polyketal with the
required alcohol having 9 to 15 carbons.
The fact that Lenke teaches a particular end cap on a similar but different polymer in and of
itself is not a reason, suggestion or motivation to use that end cap on the polymer of Kelsey. “The
mere fact that the prior art may be modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the desirability of the modification.” In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). The Examiner must
identify specifically the principle, known to one of ordinary skill in the art, that suggests the claimed
combination. In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998). No
principle that suggests incorporating the longer alkyl end cap into the polymer of Kelsey is
identified.
As pointed out by Appellants, Kelsey exemplifies the molding of a polyketal polyether to
give a clear tough plaque (Example 9), but otherwise discloses no specific utility for the polymers
(Reply Brief at 2). On the other hand, the polymers of Lenke are to be used as plasticizers for
polymeric materials (Reply Brief at 2-3; see also Lenke at col. 1, ll. 12-14). The Examiner provides
no basis to believe that one of ordinary skill in the art would find the end cap of Lenke’s plasticizer
useful in the polymer of Kelsey.
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