Appeal No. 95-3070
Application 07/907,078
lines 8-13, 43-44, 54, 56-57 and 66). We conclude that a person having ordinary skill in the art would
have been motivated from the combined teachings of Migdal and Kapuscinski to amidize the grafted
copolymer with two antioxidants such as N-phenyl-p-phenylenediamine and phenothiazine. We find that
the prior art relied upon by the examiner establishes a prima facie case of obviousness. However, we find
that appellants’ examples and Figure I presents sufficient evidence of a synergistic effect to rebut the prima
facie case.
Figure I shows a substantial increase in viscosity over a period of time for a graft copolymer
amidized with either an amine alkyl phenothiazine and N-phenyl-p-phenylenediamine. However, when the
two components are combined, the change in viscosity over the same time period of time is significantly
less. This result is not suggested or expected over the teachings of the prior art. Accordingly, appellants
have met their burden of presenting sufficient objective evidence to show that the claimed invention
patentably distinguishes over Migdal and Kapuscinski. Accordingly, the examiner’s rejection is reversed.
INDEFINITENESS
The examiner rejected claims 1-6 and 9 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard
as their invention on the ground that the claims “fail to particularly point out and distinctly claim the
derivatized copolymer additive” (answer: p.4). The expression “derivatized copolymer additive” does not
appear in any of the claims on appeal. In response to appellants’ arguments in the substitute brief, the
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