Appeal No. 1996-2115
Application 08/809,933
appellants to indicate how the examples urged to represent the claimed invention relate to
the examples intended to represent the prior art and, particularly to indicate how those
latter examples represent the closest prior art. Ex parte Gelles 22 USPQ2d 1318, 1319
(Bd. Pat. App. & Int. 1992).
In this case, the showing does not compare with the closest prior art, Candau. In re
DeBlauwe, 736 F.2d 699,705, 222 USPQ 191,196 (Fed. Cir. 1984). Comparative
•
example 1A is not a proper comparison with Candau since it does not contain MBA.
Since Candau clearly and unambigously discloses microgels containing acrylamide and
MBA, appellants’ burden is to show that the amount of MBA used in the present invention
provides an unexpected result. Appellants’ use of a relatively small amount of MBA which
results in a “water-soluble” product may not be considered unexpected in light of Zweigle’s
disclosure of the role MBA plays in the final properties of the polymer. Thus, appellants
have failed to provide a basis upon which to conclude that Examples 1-6 provide evidence
of unexpected results.
Accordingly, the rejection is affirmed.
In summary, the rejection of claim 29 under 35 U.S.C. § 112, second paragraph is
reversed. The rejection of claims 1, 4, 5, 8, 10, 13, 23, 26, 27 and 29 under 35 U.S.C. §
103 under Flesher in view of Morgan is reversed. The rejection of claims 23, 26, 27 and
29 under 35 U.S.C. § 103 under Candau in view of Zweigle is affirmed.
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