Ex parte PARIS et al. - Page 6




          Appeal No. 95-1798                                                           
          Application 07/397,415                                                       








          where A, R  and R  are spelled out in the claim.  On the1      2                                                           
          contrary, DeBoer discloses a water-insoluble, substantially non-             
          wat                                                            e             
          r-                                                             sw            
          ell                                                            ab            
          le                                                             io            
          dinated polymer, useful as a contrast agent for radiography.  We             
          see no cogent reason stemming from the prior art which would have            
          led a person having ordinary skill to modify DeBoer’s iodinated              
          polymer, per the teachings of Bertoni, to arrive at the water-               
          soluble product of claim 14.  In fact, such modification would               
          have destroyed the very essence of the teachings in DeBoer.                  
               In presenting their case before the Board, appellants                   
          emphasize the different solubility characteristics between the               
          claimed polymers (water-soluble) and the polymers disclosed by               
          DeBoer (water-insoluble and non-water-swellable).  Appellants                
          further emphasize the difference between the polymers of DeBoer              
          (water-insoluble and non-water-swellable) and the products of                
          Bertoni (water-soluble).  See the main Brief before the Board,               

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