Appeal No. 96-0819
Application No. 08/146,696
reference teaching is generic to any molecular weight; (4) the
reference generically encompasses block copolymers having a
molecular weight within appellants' claimed range; and (5) the
reference directs a person having ordinary skill in the art to
prepare a block copolymer having the same alternating blocks
recited in appellants' claims and having any molecular weight.
See the Examiner's Answer, page 4. We disagree.
We have no doubt that the prior art could be modified in
the manner proposed by the examiner to arrive at the instantly
claimed invention. This is apparent from a review of
appellants' specification and claims. However, the mere fact
that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, the cited
prior art suggests a relatively low number average molecular
weight, e.g., from 2,000 to 50,000. See Kendrick, column 3,
lines 9 through 13; and EXAMPLES 1, 3, and 5. Kendrick would
not have led a person having ordinary skill to the claimed
block copolymer, having a number average molecular weight of
-5-
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