Appeal No. 1996-0328
Application 08/060,891
Claim 22 adds the following limitation to the subject matter of claim 1: “wherein said terpolymer
has a melt index of less than about 1.0 dg/min, at least 85 percent polymer units derived from ethylene, and
has a molecular weight distribution greater than 10.” The examiner relies upon the Machon patent to
describe terpolymers that have molecular weight distributions within the scope of claim 22. The Machon
patent describes ethylene, hexene-1, butene-1 terpolymers in examples 6 and 7. The terpolymer of
example 6 is described as having a density of 0.915 g/cm and molecular weight distribution of 10.5. The3
terpolymer of example 7 is described as having a density of 0.933 g/cm and molecular weight distribution3
of 7.6. Neither of Machon’s examples describe a terpolymer with a density of less than 0.915 g/cm . The3
examiner has not directed us to evidence that would describe the affects on the molecular weight
distribution that would occur from lowering the density of the terpolymer of Machon’s examples 6 and 7
to below 0.915 g/cm . Due to different reaction conditions used in the Machon’s examples 6 and 7, we3
do not see a basis for predicting how the changes in the density will impact the molecular weight distribution
of the copolymer. The record lacks evidence showing that one having ordinary skill in the art would be
motivated to modify the density of the polymer while maintaining the molecular weight distribution 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. Since the terpolymers would not have been obvious, it would not have been
obvious to make films from those polymers. The rejection of claims 22, 26 and 32 is reversed.
3. Patentability of claim 36
Claim 36 adds the following limitation to the subject matter of claim 1: “wherein said film has a
puncture resistance greater than the puncture resistance of similarly made films comprising a two monomer
component derived copolymer of ethylene and either 1-butene or 1-hexene.” Before considering the
rejection and applicants’ arguments, it is first necessary to interpret certain language in the appealed claim,
namely the phrase “similarly made films.” Because of this phrase, the claim language is indefinite and
hence fails to particularly point out and distinctly claim the subject matter which appellant regards as his
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