Appeal No. 96-1947
Application No. 08/161,618
“even though terpolymer is not recited explicitly Marks
recites monomers which would make the claimed terpolymer.”
“When relying on numerous references or a modification of
prior art, it is incumbent upon the examiner to identify some
suggestion to combine references or make the modification.
[citation omitted].” In re Mayne, 104 F.3d 1339, 1342, 41
USPQ2d 1451, 1454 (Fed. Cir. 1997). The examiner has failed
to identify any suggestion to modify Marks in the manner
proposed above. In fact, the use of polyvinyl butyryl is not
disclosed or suggested at column 2, lines 36-60, of Marks but
is disclosed at column 8, lines 1-4. Although Marks does
disclose the individual use of polyvinyl alcohol, polyvinyl
acetate, polyvinyl butyryl, and a polyvinyl acetate-alcohol
copolymer (see column 2, line 52, and column 8, lines 2-3),
the examiner does not identify any disclosure or suggestion in
Marks of any terpolymer, much less the specific terpolymer
recited in the appealed claims. As noted by appellants on
page 3 of the Brief, the claimed terpolymer is made by
copolymerizing three different monomers (see the
specification, page 4, lines 14-35). A terpolymer is the
reaction product of three monomers and thus would differ from
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