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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