Appeal No. 1996-0328
Application 08/060,891
Applicants also argue that the limitations of claim 36 provide unexpected results. Regarding claim
36, applicant argues:
It is further submitted that appellants teach how to make novel biaxially
stretched, heat shrinkable films having unexpected and surprising properties one
unexpected advantage of the inventive films is the surprisingly good combination
of high shrinkage values and high resistance to puncture especially at elevated
temperatures. Claim 36 especially claims the puncture resistant feature.52
b. Decision on claims 1, 7-10, 12-14, 16, 17, 20, 27-31 and 33-35
Applicants have presented separate arguments for claims 1, 9, 10, 11, 14 and 36. Thus, we will
separately address those claims. Claims 7, 8, 12, 13, 16, 17, 20, 27-31 and 33-35, all of which depend
from claim 1, and have not been separately argued, will stand or fall with the patentability of that claim.
37 CFR § 1.192(c)(7).53
The examiner relies on the combination of Lustig, Warren, Steinert, Machon, Kohyama, Tominari,
Sugahara, Beran, Karol and Durand patents in holding that the claimed subject matter would have been
prima facie obvious. The Federal Circuit has delineated the standard for establishing a prima facie case
under § 103 based on a combination of references:
Where claimed subject matter has been rejected as obvious in view of a
combination of prior art references, a proper analysis under § 103 requires, inter
alia, consideration of two factors: (1) whether the prior art would have suggested
to those of ordinary skill in the art that they should make the claimed composition
or device, or carry out the claimed process; and (2) whether the prior art would
also have revealed that in so making or carrying out, those of ordinary skill would
have a reasonable expectation of success. See In re Dow Chemical Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Both the suggestion and the
reasonable expectation of success must be founded in the prior art, not in the
applicant's disclosure. Id.
52Brief, page 22, paragraph 1.
53Although claim 32 was not separately argued, claim 32 is dependent upon claims 22 and 26.
Consequently, claim 32 will stand or fall with the subject matter of claims 22 and 26.
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