Ex parte STATZ - Page 3


                  Appeal No. 95-4387                                                                                                                     
                  Application 08/021,741                                                                                                                 

                  compositions taught in these references, we further conclude that one of ordinary skill in this art                                    
                  would not have considered the teachings of Coran et al. with respect to the adhesive resin                                             
                  compositions of Ohmae et al. for two reasons.  First, Ohmae et al. discloses that at least one of                                      
                  the functional groups of component (B) can be an epoxy group, which functional group is not                                            
                  disclosed in Coran et al.  And, second, where the functional group of component (B) of Ohmae et                                        
                  al. is a carboxylic acid group, there is no indication in Ohmae at al. that the carboxylic acid groups                                 
                  are neutralized to any extent while they are completely neutralized in Coran et al.  We also                                           
                  conclude that one of ordinary skill in the art would not have found the requisite motivation to                                        
                  adjust the amount of thermoplastic resin which may be present in the adhesive compositions of                                          
                  Ohmae et al. in the teachings of EP =139 because we find that, unlike Ohmae et al. and Coran et                                        
                  al., this reference does not disclose the use of a thermoplastic polyester resin in the crosslinkable                                  
                  polymer compositions taught therein (e.g., page 2, lines 20-30).                                                                       
                           Accordingly, in view of the differences in the teachings of the applied references, we                                        
                  conclude that the combination of references would not have reasonably suggested the claimed                                            
                  invention to one of ordinary skill in this art.  In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,                                       
                  1091 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).                                                 
















                           The examiner=s decision is reversed.                                                                                          
                                                                       Reversed                                                                          



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