Appeal No. 1996-0328
Application 08/060,891
index required by the claims. While some individual bipolymers are disclosed, no bipolymers are59
disclosed having the melt index of about 0.25 g/10mins in combination with a density less than 0.915 g/cm .3
The examiner relies on the combination of Lustig, Warren, Steinert, Machon, Kohyama, Tominari,
Sugahara, and Durand patents as suggesting the melt index of about 0.25 g/10mins. While some of these
references disclose terpolymers made from the required monomers and terpolymers or bipolymers having
one of the required properties, none of the references show a bipolymer or a terpolymer having the
required combination of melt index of about 0.25 g/10mins and density less than 0.915 g/cm . The 3
examiner has not directed us to any evidence that demonstrates that the person having ordinary skill in the
art would be motivated to make the changes necessary to the disclosed bipolymers and terpolymers to
simultaneously obtain the claimed combination of melt index and density. In proceedings before the PTO,
the examiner has the burden of establishing the prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fritch, 972 F.2d 1260, 1265, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). In other words, the
record lacks evidence showing that one having ordinary skill in the art would be motivated to modify the
melt index of the polymer while maintaining the density within the claimed range. A conclusion of
obviousness based upon a combination of references requires that the references provide the person of
ordinary skill in the art a reasonable expectation of success in obtaining the claimed subject matter. In re
Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988). Thus, on this record
we are unable to hold that the terpolymers required by claims 11 would have been prima facie obvious.
Since the terpolymers would not have been obvious, it would not have been obvious to make films from
those polymers.
2. Patentability of claims 22, 26 and 32
59The word “bipolymer” as used here means a polymer formed from two monomers.
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