Appeal No. 1996-0837
Application 08/603,014
223 USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally available
in the art would have led one of ordinary skill in the art to combine the references to arrive
at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Here, we do not find that the examiner has begun to provide reasons, based on the
applied prior art or otherwise, as to why it would have been obvious to one of ordinary skill
in the art to arrive at the claimed compositions. In fact, in his rejection, the examiner has
not mentioned any of the compounds required by sections (A) and (B) of independent
claims 1 and 88. Moreover, in reading the references, we do not find that they even allude
to compounds having the limitations described in the claims. Thus, we cannot find any
rational basis for the examiner’s conclusion that the claimed invention would have been
obvious to one of ordinary skill in the art in view of Cleveland and Courturier.
Even if we assume, arguendo, that the poly(alpha-methyl styrene) referred to in the
rejection is a compound within the scope of section (B) of the claims, the examiner has not
provided any explanation as to how this compound satisfies the claim limitations of having
a melting point in the range of about 0EC to about 130EC and being dispersible with a
compound described in section (A) of the claims. Nor has the examiner explained how the
polymer composition of (A) and the poly(alpha-methyl styrene) is normally soluble at room
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