Appeal No. 1996-3000
Application 08/304,105
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of the appealed claims under 35 U.S.C. § 103 as being unpatentable
over Agarwal et al. Each of the appealed claims involves a plasticized thermoplastic sulfonated4
polymer emulsion which contains a plasticizer, selected from a specified group, that is characterized as,
inter alia, “substantially insoluble in the water phase of the emulsion” as this phrase is defined by
appellants in their specification (page 4). In re Morris, 127 F.3d 1048, 1055-56, 44 USPQ2d 1023,
1029 (Fed. Cir. 1997). The examiner has expressly “acknowledged that appellants’ specifically
claimed plasticizers are not disclosed in this reference” (answer, page 2) and states that “a plasticizer is
generically called for by” Agarwal et al. (id., page 3, emphasis supplied; see also page 4, lines 3-5).
Thus, the examiner reasons that because the “instantly claimed plasticizers are the most conventionally
incorporated plasticizers known to be used in thermoplastic elastomers” it would have been prima
facie obvious to “incorporate a conventionally known plasticizer for thermoplastic elastomers” as a
plasticizer is “generically” suggested in Agarwal et al. Appellants submit that the reference fails to
suggest the claimed invention because, inter alia, the claimed “emulsion includes a specified list of
plasticizers, none of which are ionic preferential plasticizers” as disclosed in Agarwal et al. (emphasis
supplied), and that “one with ordinary skill in this art would not substitute . . . a non-ionic plasticizer for
an ionic plasticizer” (brief, page 3; see also page 4).5
We must agree with appellants that the examiner has failed to establish a prima facie case of
obviousness. We find that the sole suggestion in Agarwal et al. to use a plasticizer in the emulsion-type
adhesive compositions taught therein appears at col. 2, lines 22-24, wherein it is stated that “to the
compositions can be optionally added an ionic preferential plasticizer” (emphasis supplied). The
examiner has not provided any evidence or scientific explanation on this record why one of ordinary
the plasticizers of claim 11. For purposes of judicial economy, we have considered appealed claims 11
through 15 as depending on claim 7 on which they ultimately depended when claim 10 was pending.
3The copy of the appealed claims appended to the brief is in error because claim 8 is not included
therein.
4Agarwal et al. is listed at page 2 of the answer.
5We refer in our opinion to the brief filed on August 7, 1995 (Paper No. 11).
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