Ex parte SCHAUBER - Page 5

                 Appeal No. 1997-0433                                                                                                              
                 Application 08/230,582                                                                                                            

                 from the copolymer product in a devolatilization step and recycled while in the process of Suzuki,6 the                           
                 diluent employed in the reaction mixture is retained as part of the viscosity index improver product                              
                 (brief, page 7).7  The examiner, in response, contends that the “product of Jarvis, prior to the stripping                        
                 step, would comprise a ‘copolymer solution,’” which is taught by Suzuki, and that claim 1, in view of the                         
                 transitional term “comprising,” does not exclude processes containing “a stripping step as taught by                              
                 Jarvis” (answer, page 7).                                                                                                         
                         We have carefully considered the teachings of Jarvis and find that, contrary to the examiner’s                            
                 first position, there is no teaching in this reference which would have explicitly or implicitly suggested to                     
                 one of ordinary skill in this art to stop the continuous process taught therein prior to the step of                              
                 devolatilizing or stripping the diluent from the copolymer and collect a “copolymer solution” and one of                          
                 ordinary skill in this art would not have found in Suzuki’s single step process for producing a solution of                       
                 polymer and diluent to be used as such a suggestion to so modify the process of Jarvis.  Indeed, Jarvis                           
                 teaches “to strip nearly all of the solvent” for recycling such that the “finished polymer . . .typically has . .                 
                 . less than about 1.0 weight percent” and can further be finished for “use in plastics fabricating                                
                 equipment” (col. 7, line 22, to col. 8, line 12).  In view of the teachings of Jarvis, we also cannot                             
                 subscribe to the examiner’s second position, because while it is true that, as the examiner points out,                           
                 claim 1 includes processes that include a stripping step in view of the transitional term “comprising,” see                       
                 Baxter, supra, the clear language of the claim requires that the “viscosity improving copolymer solution”                         
                 must have “from about 30 weight percent to about 90 weight percent of a viscosity index improving                                 
                 6  See, e.g., page 3, twelfth sentence, page 4, seventh sentence.                                                                 
                 7  Appellant also contends that the clause “said additional (meth)acrylate monomer consisting essentially                         
                 of the first (meth)acrylate monomer, the second (meth)acrylate monomer or a mixture thereof” in claim 1                           
                 “excludes a process where styrene is included in the comonomers added during the second stage”                                    
                 (brief, page 4), that is, second polymerization step.  The difficulty that we have with appellant’s position                      
                 is that it is readily apparent from the plain language of claim 1 that the phrase “consisting essentially of”                     
                 limits only the “additional (meth)acrylate monomer” added in the second polymerization step. Thus, the                            
                 transitional term “comprising” would open claim 1 to include processes wherein styrenic monomers are                              
                 added to the second polymerization step. See In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795,                                    
                 802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is propylene, any other                                       
                 monomer may be present, because the term ‘comprises’ permits the inclusion of other steps, elements,                              
                 or materials.”).                                                                                                                  

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