Appeal No. 2005-2639
Application 08/855,905
pages 29-31 and Table 1, page 36, and declaration III Table 2). These include, among
others, the kind and amount of “Resin” (e.g., polyamide in Takashi Experiments and
polyethylene in the claimed Experiment), the kind and amount of fine inorganic
particulate filler, the thicknesses of the individual layers and the stretching ratios.
[Original decision, page 20; underline emphasis supplied.]
The portion of our original decision quoted by appellants (request, page 3) immediately followed
this passage. With respect to the use of a different antistatic agent, appellants’ selected quote
omits the concluding phrase “as declarant Yamanaka explains (page 2),” which explanation at
page 2 of the Yamanaka III declaration is the same as that set forth by appellants in the request
(original decision, page 20). Appellants do not refer in their request to either this finding or our
further finding in these respects that “[t]he antistatic agent used in paper-like layers of
Experiments 2 and 3 is the polyetheresteramide used in specification Example 1 but in
significantly reduced amounts and without a polyamide or a modified low-molecular weight
polypropylene” (original decision, page 20).
We agree with appellants’ second contention to the extent that we erroneously found that
Takashi Example 12 included an antistatic agent. However, it is apparent that the remaining
considerable number of differences we found between the compared films provide substantial
evidence supporting our conclusion that the Yamanaka III declaration does not present a
side-by-side comparison wherein the sole difference is in the kind and amount of antistatic agent,
which is the thrust of the ground of rejection, and thus, the evidence does not establish that the
reported results would have been unexpected by one of ordinary skill in this art in view of the
teachings of the applied references (original decision, page 21).
In view of our findings with respect to the evidence in the Yamanaka III declaration, we
found it unnecessary to our original decision to consider whether the evidence was
commensurate in scope with the claims, including appealed claim 47, and find it unnecessary to
do so on rehearing.
Accordingly, we grant appellants’ request to the extent that we have reheard our original
decision entered December 16, 2005, and we modify our original decision by withdrawing the
language “base layer of Takashi Example 12 contains an antistatic agent which was omitted in
declaration III Experiments 1-3, and the” from the penultimate sentence in the sole full
paragraph on page 20 thereof.
- 3 -
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007