Appeal No. 1995-0770
Application No. 07/929,457
been obvious to one of ordinary skill in the art. In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980)(Optimization of result effective variable is within the skill of
the art.).
As to the requirement of claim 1 on appeal that the resulting copolymer is
substantially free of gel formation, we note that Kamath '703 does not report that gel
formation is a problem. Furthermore, while the specification of this application indicates
that the one of the objects of the present invention is to form copolymers which are
substantially free of gel formation, e.g., page 12, lines 11-12, the specification does not
appear to teach how one goes about accomplishing that goal. Rather, the emphasis in the
working examples of the specification is on achieving another stated object of the present
invention, i.e., producing a copolymer which is substantially free of residual monomers.
That goal is clearly taught by Kamath '703.
Be that as it may, where as here the prior art describes substantially the same
process as claimed it is reasonable to shift the burden to appellants to establish that the
three step polymerization process described in Kamath '703 does not result in a
copolymer which is "substantially free of gel formation" as required by claim 1 on appeal.
In re Best, 562 F.2d 1252, 1254-1255, 195 USPQ 430, 432-433 (CCPA 1977).
In our view, these facts establish that claim 1 on appeal would have been prima
facie obvious to one or ordinary skill in the art from a consideration of Kamath '703.
b. Evidence of non-obviousness
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