Ex parte SMITH et al. - Page 14




                    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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