Appeal No. 95-4199
Application No. 08/068,445
copolymer, we do not agree that it would have been obvious to
employ such linkage in the polysiloxane-polyester (carbonate)
copolymer described in Schmidt. We find no evidence, and the
examiner has not supplied any, that would have suggested the
desirability of employing propylene-phenylene between
polysiloxane and polyester. The examiner simply fails to
supply sufficient facts to establish a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103.
With respect to process claims 8 through 11, the examiner
asserts that “appellants’ claimed method is conventional in
the art for preparing polysiloxane-polycarbonate-polyester
copolymers as can be seen in Example 4 of the Schmidt
reference”. See Answer, page 5. Rather than explaining why
it would have been obvious to employ the claimed reactants, as
well as produce the claimed terpolymers in the alleged
“conventional” method, the examiner relies on In re Durden,
763 F.2d 1406, 226 USPQ 359 (Fed. Cir. 1985). Id. However,
as held by In re Ochiai, 71 F.3d 1565, 37 USPQ2d 1127 (Fed.
Cir. 1995), the use of per se rules is not condoned in
applying the test for obviousness. Obviousness requires a
factual analysis involving taking the claimed subject matter
7
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