Ex parte SCHAUBER - Page 6

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

                 copolymer in the diluent,” that is, the “solution” produced must contain about 10 weight percent of the                           
                 “oil soluble diluent.”  We are of the opinion that one of ordinary skill in this art also would not have                          
                 found in the teachings of Jarvis the explicit or implicit suggestion to decrease the amount of diluent                            
                 stripped from the copolymer thus forming a solution of the polymer in the diluent for use in that form                            
                 even in view of the process and product taught in Suzuki.                                                                         
                         Accordingly, we must agree with appellant that the only direction to the claimed invention as a                           
                 whole on the record before us is supplied by appellant’s own specification.  Dow Chemical, supra.                                 
                         The ground of rejection of claim 8 based on Suzuki alone stands on a different factual footing.                           
                 The examiner finds that the claimed viscosity index improving copolymer solution, characterized by the                            
                 method of claim 1, reasonably appears to be identical or substantially identical to the viscosity index                           
                 improving copolymer solutions taught and disclosed8 by Suzuki and thus would be anticipated by or                                 
                 obvious over this reference (answer, pages 4-5 and 7-8).  Appellant submits that Suzuki does not teach                            
                 or suggest that the single step method of polymerization taught therein would obtain viscosity index                              
                 improving copolymer solutions “including less than or equal to 1000 parts by weight residual styrene                              
                 monomer per one million parts by weight solution,” as specified in and obtained with the process of                               
                 claim 1 on which claim 8 depends (brief, pages 8-10).                                                                             
                         We have carefully considered the complete disclosure of Suzuki and agree with appellant that                              
                 Suzuki does not teach or suggest the limitation on the amount of residual styrenic                                                

                 8  The examiner also refers to “reference example 1” of Suzuki in the answer (page 5). We find that                               
                 while this comparative example (page 6) falls outside of the viscosity index improving copolymer                                  
                 solutions taught by Suzuki because the copolymer contains 18 weight % of methacrylate having alkyl                                
                 groups of 16 and 18 carbon atoms instead of at least 50 weight percent of such a methacrylate as                                  
                 specified (pages 1 and 2), it nonetheless falls within appealed claim 8 as claim 1 specifies that the “first                      
                 (meth)acrylate monomer” which has a “(C16-C24)alkyl” can range from “about 5 weight percent to                                    
                 about 70 weight percent” of the copolymer.  Thus, “reference example 1” disclosed by Suzuki is                                    
                 applicable to claim 8 on the statutory basis set forth in the statement of the rejection even though Suzuki                       
                 teaches that this viscosity improving copolymer solution is not as effective as the viscosity improving                           
                 copolymer solution taught therein. See In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132                                       
                 (Fed. Cir. 1994).                                                                                                                 

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