Appeal No. 1996-1529
Application No. 08/233,219
prior art of record teaches that multiple catalytic systems can be combined in the same environment at
the same time with a reasonable expectation of success, e.g., that the conditions of each reaction would
be mutually compatible, that the components of one system would not adversely interact/impact the
components of another system, etc. The reasonable expectation of success must be found in the prior
art and not based on applicant's disclosure. Therefore, we conclude that the examiner has not
established a prima facie case of obviousness for the subject matter of claim 6. Having concluded that
the examiner has not established a prima facie case of obviousness as to method claim 6, we do not
reach appellants’ discussion of unexpected results on pages 14-20 of the brief as it relates to the
method claims. Since claims 7-11 and 13-16 depend on claim 6, our conclusion equally applies to
these claims.
We treat product-by-process claim 17 separately. According to the examiner, the process of
Wardle produces energetic polymers of controlled functionality and molecular weight from the claimed
cyclic ether monomers (answer, para. bridging pages 12-13). Appellants argue (a) that the claimed
polymers have “precise hydroxyl functionality and molecular weight” (brief, page 12; para. bridging
pages 16-17) and (b) unexpected results, i.e., (i) that the data in appellants’ specification shows
polymers of greater molecular weight than shown in Wardle’s patent (brief, page 18), and (ii) that the
comparative data in the Wardle Declaration filed April 26, 1994 (Paper No. 13, the “Wardle
Declaration”) shows polymers which are nearer a target molecular weight and have functionalities of 1.0
as opposed to Wardle’s polymer having a functionality of 1.2 and 1.4 (brief, pages 19-20).
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