Appeal No. 94-2078
Application 07/834,755
We have carefully considered the record before us, and based thereon, find that we cannot
sustain either of the grounds of rejection under 35 U.S.C. § 103 set forth by the examiner in his
answer (Paper No. 10,4 pages 3-4). It is well settled that the examiner may satisfy his burden of
establishing a prima facie case of obviousness under § 103 by showing some objective teachings
or suggestions in the prior art taken as a whole or that knowledge generally available to one of
ordinary skill in the art would have led that person to arrive at the claimed invention as a whole,
including each and every limitation of the claims, without recourse to the teachings in appellant’s
disclosure. See generally In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed.
Cir. 1988); In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988);
In re Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968). We cannot conclude that the examiner has carried his burden in the case
before us.
We have construed appealed claim 12 to require that in an aqueous suspension process for
producing copolymers of vinyl chloride and vinyl esters of fatty acids, wherein the acid portion
contains from 4 to 26 carbon atoms, at least 0.25 part by weight of at least one mercaptan chain
transfer agent is admixed with an encapsulating amount of a vinyl ester of fatty acids and the
encapsulated mixture so formed is then added to the polymerization medium prior to the start of
polymerization. This construction is consistent with the broadest reasonable interpretation of the
terms of this claim consistent with appellant's specification as it would be interpreted by one of
ordinary skill in this art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We note
in this respect that the term “encapsulation” does not have its ordinary meaning as appellant
intends that this term is to be used in the sense of “encapsulation, complexation or interaction” to
define the formation of a “homogenous system” between the vinyl ester of fatty acids and the
mercaptan chain transfer agents (specification, page 10, line 20, to page 11, line 5). See, e.g.,
Morris, supra; York Prods., Inc. v. Central Tractor Farm & Family Ct., 99 F.3d 1568, 1572-73,
40 USPQ2d 1619, 1622 (Fed. Cir. 1996), and cases cited therein (a claim term will be given its
finally rejected claims as claims 12-15 and 28-32 and appellant submits argument based on
appealed claim 12 in the brief.
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