Ex parte SMITH et al. - Page 11

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

                                         claimed properties make excellent films having improved resistance to tearing and                                                      
                                         improved elongation at break (page 5, lines 10-12; page 4, lines 3-6; Example 6);                                                      
                                         and Kohyama and Tominari who teach that films having improved properties may                                                           
                                         be prepared from ethylene copolymers of alpha-olefins having 4 to 20 carbon                                                            
                                         atoms including terpolymers thereof  (Kohyama, page 1, lines 1-9; page 14, lines                                                       
                                         23-26; Tominari column 1, lines 8-19; column 4, lines 7-17). The reference in                                                          
                                         Australia 556,144 on page 4 at line 52 "bulk density" is a translation error, i.e.,                                                    
                                         should be merely density. Further, Petrochem (507) [Sugahara] teaches that films                                                       
                                         made from (C -C -C ) terpolymers having the claimed properties have excellent                                                          
                                                           2   4   6                                                                                                            
                                         impact strength and transparency (Abstract; page 72). Thus, it is believed that the                                                    
                                         art establishes a strong prima facie case of obviousness.  [Bracketed material47                                                           
                               Applicants argue the examiner has not established a prima facie case of obviousness.  Applicants’                                                
                    position may be understood from the following excerpt from the Brief:                                                                                       
                                                   All of the Examiner's rejections rely upon the Lustig et al and Warren                                                       
                                         patents as primary references. These references broadly teach production of                                                            
                                         biaxially stretched, heat shrinkable films made from VLDPE resins. These                                                               
                                         references do not disclose or teach use of the specific terpolymer resins as                                                           
                                         presently claimed. These references do have examples of VLDPE bi-polymer films                                                         
                                         and in that respect are similar to comparative examples (not of the invention)                                                         
                                         disclosed in the present application. In order to supplement the deficiencies of                                                       
                                         these primary references as evidence supporting a prima facie case of                                                                  
                                         obviousness, the Examiner urges their combination with numerous other patents                                                          
                                         including the Beran et al, Karol, Kashiwa et al, Durand et al, Steinert, Machon,                                                       
                                         Kohyama, Tominari et al, Petrochem 507, and Petrochem 807  references in                                                               
                                         various combinations. Such combination of Lustig et al or Warren with these                                                            
                                         secondary references is improper. Furthermore, even if such combination were to                                                        
                                         be proper, there is no suggestion or motivation to guide one of ordinary skill in the                                                  
                                         art to the present invention. Also, the present invention exhibits an unexpected                                                       
                                         combination of properties not disclosed or taught by the cited references.48                                                           
                                         Emphasis original.                                                                                                                     

                               47Examiner’s Answer, paragraph bridging pages 4-5.                                                                                                
                               48Brief, paragraph bridging pages 9-10.                                                                                                           

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