Appeal No. 96-0819
Application No. 08/146,696
guide. In this regard, note the relatively large difference
between the upper limit of Kendrick's preferred range (50,000)
and the lower limit of the claimed range (at least about
100,000). On these facts, we find that appellants suggest the
desirability of a number average molecular weight of at least
about 100,000, but the cited prior art does not.
The examiner argues that Kendrick is "generic to any
molecular weight" (Answer, page 4, lines 12 and 13); that
Kendrick encompasses block copolymers having a molecular
weight within appellants' claimed range; and that Kendrick
directs a person having ordinary skill to prepare a block
copolymer having any molecular weight. However, we are not
aware of any such
per se rule of obviousness whereby a generic teaching with
respect to molecular weight is sufficient to reach appellants'
specific claim limitation. On the contrary, every case,
particularly those raising the issue of obviousness under
§ 103, must necessarily be decided on its own facts. Cf. In
re Jones, 958 F.2d 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir.
1992) (court declines to extract from Merck & Co. v. Biocraft
Labs. Inc., 874 F.2d 804, 806-09, 10 USPQ2d 1843, 1845-48
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