Appeal No. 2004-2322 Page 7
Application No. 09/385,412
This argument is not persuasive because, for the reasons discussed above, we
conclude that Mougin would have reasonably suggested the polycondensate recited in
instant claim 1.
Appellants also argue that “there is no evidence of record suggesting that Mougin
discloses the polycondensate is obtained from at least one diol containing at least one
functional group chosen from acid radicals and salts thereof, other than the broad
recitation at column 4, lines 17-24 that the coupling agents carry chemically anionizable
or cationizable groups.” Appeal Brief, page 7. “[W]ithout further suggestions or
identified parameters in Mougin to select a particular combination of variable giving rise
to the recited combination, the disclosure is merely directed to endless possibilities, and
thus, cannot render obvious Applicants[‘] recited claims. See In re Baird, 16 F.3d 380,
382, 29 U.S.P.Q.2d 1550, 1552 (Fed. Cir. 1994).” Id., page 8.
This argument is also unpersuasive. While Mougin’s description of the coupling
agent in column 4 is indeed broad, the reference goes on to describe preferred coupling
agents within that broad genus. Specifically, Mougin describes coupling agents
comprising “divalent radicals B carrying carboxylic or sulphonic functional groups which
are particularly suitable within the scope of the [disclosed] invention.” Column 6, lines
24-26. Those “particularly suitable” coupling agents reasonably appear to be diols
comprising an acid radical or salt thereof. Thus, Mougin would have suggested to those
skilled in the art a polycondensate such as that recited in instant claim 1. Since Mougin
directs those skilled in the art to coupling agents such as those recited in the instant
claims, the facts of this case are not comparable to those of Baird.
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