Appeal No. 2005-0486
Application No. 09/887,836
Secondly, although we appreciate the examiner’s
discussion that process limitations are not relevant in a
product claim, we believe the examiner misses the point
made by appellant. Appellant’s discussion of the process
requirements of Saad and Satoh are relevant with respect to
the issue as to whether the references are combinable.
That is, if a proposal for modifying the prior art in an
effort to attain the claimed invention causes the art to
become inoperable or destroys its intended function, then
the requisite motivation to make the modification would not
have existed. See In re Fritch, 972 F.2d 1260, 1265 n.12,
23 USPQ2d 1780, 1783 n.12 (Fed. Cir. 1992). In this
regard, appellants comments made on page 5 of the brief
regarding the blown film extrusion process of Saad, and the
incompatablity of the graft polymerization mixture of Satoh
with the blown film extrusion process of Saad, is well
taken.
In view of the above, we reverse the rejection of
claims 1 through 5 under 35 U.S.C. § 103 as being
unpatentable over Saad in view of Satoh.
II. The 35 U.S.C. § 103 rejection of claim 11 as being
obvious over Omura in view of Satoh
The examiner’s position for this rejection is set
forth on pages 6-8 of the Answer. Appellant’s position
regarding this rejection is set forth on pages 6 and 7
of the Brief, and pages 6-8 of the Reply Brief.
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