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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