Appeal No. 96-1947
Application No. 08/161,618
blends or mixtures of the monomers disclosed by Marks,
particularly since the claimed terpolymer is required to have
specific weight fractions of each component, a specific
molecular weight range, a specific range for T , and form an
g
electrically insulating composition while the coating of Marks
must be electrically conductive (see column 1, lines 57-59).
The examiner has failed to identify any suggestion in Marks or
evidence of the knowledge generally available to one of
ordinary skill in the art that would support the examiner’s
proposed modification of Marks. In re Jones, 958 F.2d 347,
351, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992).
Sammells does not cure the deficiencies of Marks. It is
not clear why Sammells was combined with Marks. However, the 2
examiner has not identified any disclosure or suggestion in
Sammells that would cure the lack of disclosure or teaching in
2It appears that Sammells was applied to show that “the
metal halide salts of Sammells would be expected to function
equivalently.” (Office Action dated Apr. 29, 1994, Paper No.
4, page 4, and the Answer, page 4), although alkali metal
salts are taught by Marks (column 3, lines 14-57). However,
the examiner also states that “each reference discloses the
basic components” (Paper No. 4, page 4) and “each reference
suggests the basic components of the terpolymer” (Answer, page
4), presumably referring to each of Marks and Sammells.
6
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