Appeal No. 1995-0770
Application No. 07/929,457
Appellants rely upon the working examples on pages 43-47 of the specification as
evidence of nonobviousness. Example I prepares a terpolymer according to the process
set forth in claim 1 on appeal. The significant parameter discussed in this example is the
residual monomer content of the terpolymer. Example I reports that no detectable levels of
residual styrene or ethyl acrylate remained.
The first two comparative examples use either a 2-stage heating schedule
(Comparative Example A) or a single stage heating step (Comparative Example B).
Since Kamath '703 clearly and unambiguously describes a polymerization process which
has three distinct and separate heating stages as required by claim 1 on appeal, these
comparative examples are not representative of the closest prior art. In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Comparative Example C does not
set forth the manner in which the comparative copolymers were prepared. Thus, it is not
relevant in determining the patentability of claim 1 on appeal.
c. Holding
Since appellants' evidence of nonobviousness is not based upon a comparison
with the closest prior art, it is entitled to little if any weight. Comparing the evidence of non-
obviousness with the evidence of obviousness, we hold that the subject matter of claim 1
on appeal would have been obvious within the meaning of 35 U.S.C. § 103.
Claims 2, 3, 7, 8, 11, 12, 14 through 16, 18, and 28
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