Appeal No. 2003-0130
Application 08/950,187
recited in appellants’ claim 1. However, the examiner concludes
that because the polymers disclosed in Twu are made by processes
using catalyst compositions which are substantially identical to
those disclosed in appellants’ specification, it is reasonable to
presume that the claimed properties would be inherent.
Upon our review of Twu, however, we observe that the
preparation described, for example, in Example 1, beginning on
page 6, of Twu differs from the preparation described beginning
on page 49 of appellants’ specification, for example. The
examiner also recognizes that the processes are not identical as
mentioned in the above paragraph. However, we observe that the
examiner’s analysis does not address the acknowledged
differences. The examiner does not explain how, even though
differences exist, the resultant copolymer would satisfy
conditions (1)-(5) set forth in appellants’ claim 1.
Hence, the examiner has not provided a basis to reasonably
support the determination that the allegedly inherent
characteristics necessarily flow from the teachings of the
applied prior art. Ex parte Levy, supra. We therefore reverse
the anticipation rejection.
With regard to the obviousness rejection, we again note that
the initial burden of satisfying a prima facie case of
obviousness rests on the examiner. In re Oetiker, 977 F.2d 14,
43, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In determining
whether an invention is obvious, the examiner must consider: 1)
the scope and content of the prior art, 2) the differences
between the prior art and the claimed invention, 3) the level of
ordinary skill in the art, and 4) any objective considerations of
nonobviousness that may be present. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 466-67 (1966). Also,
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