Ex parte YAMAO et al. - Page 5




              Appeal No. 95-3220                                                                                           
              Application 08/112,986                                                                                       



              anhydride grafted ethylene-butene-1 copolymer.                                                               
                     The examiner argues on p. 4 of the Answer that:                                                       
                     it would have been prima facie obvious and sufficiently motivated to one skilled in                   
                     the art to substitute the generic arylene sulfide polymers in Katto et al. with the                   
                     amino/amide functionalized polyarylene sulfide in U.S. -704 [Takekoshi]  and                          
                     JP. 462 [Suzuki] since their enhanced compatibility and reactivity with the                           
                     acid/anhydride functionalized materials are clearly taught in these references.                       
                     We disagree.  We find no teaching or suggestion in Katto that the compatibility of                    
              the polyarylene sulfide resins disclosed therein could be enhanced by the addition of                        
              amino or amido substituents.  Nor do we find any suggestion in Takekoshi or Suzuki                           
              (assuming, arguendo, that the abstract is prior art) to add amine or amide functionality to                  
              polyarylene sulfide resins having a carboxylic acid, a carboxylic acid anhydride or a                        
              carboxylic acid halide moiety.  We note the examiner’s statement “that if one skilled in the                 
              art was given the three references at the time of the invention, even though U.S. -975                       
              [Katto] is silent in the modification of PAS but is, however, generic to both modified and                   
              unmodified PAS, it [sic, one of ordinary skill in the art ?] would be [sic, would have been]                 
              sufficiently motivated to use a modified PAS instead of an unmodified PAS since [the]                        
              secondary references are directed to teachings of enhancing the reactivity and hence                         
              compatibility between arylene sulfide polymers and other materials with reactive moieties.”                  
              [Emphasis added.]  Answer, p. 5.  However, we point out that, on this record, the only                       
              reason one skilled in the art would have been given the three references applied in the                      

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