Ex parte SMITH et al. - Page 9

                    Appeal No. 1996-0328                                                                                                                                        
                    Application 08/060,891                                                                                                                                      

                               2.        Analogous Art                                                                                                                          
                               The applicants argue that one of ordinary skill in the art of making biaxially stretched films would                                             
                    not consider either catalyst or polymer resin manufacturing patents to be relevant to the biaxially stretched,                                              
                    heat shrinkable film art.  Thus, according to applicants, the Beran, Karol, Steinert, Machon, Kohyama,                                                      
                    Tominari, Sugahara and Durand patents, which do not expressly describe heat shrinkable, biaxially                                                           
                    stretched films are not in the field of endeavor of the present invention.                                                                                  
                               The Federal Circuit has delineated two indicia for indicating whether prior art references are                                                   
                    analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and                                                 
                    (2) if the art is not within the same field of endeavor, whether it is reasonably pertinent to the particular                                               
                    problem to be solved.  In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992); In                                                          
                    re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032,                                                              
                    1036, 202 USPQ 171, 174 (CCPA 1979).                                                                                                                        
                               We note that applicants’ claims 1 and 7-35 require polymer properties, for example MFR, density                                                  
                    and molecular weight distribution and not film properties, such as impact strength and elasticity, for                                                      
                    patentability.  Applicants’ specification at page 11, last paragraph, states “Catalyst selection is recognized                                              
                    by those of ordinary skill in the art to be an important variable parameter for modifying terpolymer                                                        
                    polymerization and resultant properties.”  Thus, applicants specification indicates the relevance of both                                                   
                    polymer resins and catalysts to the claimed subject matter.  We hold that the applicants’ field of endeavor                                                 
                    in this case includes ethylene copolymers and their production.                              All the references relied upon by                              
                    the examiner describe ethylene polymers and their production.  The Beran and Karol patents, for example,                                                    
                    describe the effects on the properties of ethylene polymers produced by different catalysts.    The Steinert,     45                                        
                    Machon, Kohyama, Tominari, Sugahara and Durand patents describe ethylene copolymers and their                                                               

                               45Beran, column 2, lines 1-48; Karol, page 1, line 12 to page 2, line 2.                                                                          

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