Appeal No. 1997-0433
Application 08/230,582
monomer specified in claim 8.9 However, merely establishing that Suzuki does not teach or suggest this
limitation does not amount to effective argument, and certainly not evidence, that one of ordinary skill in
this art preparing a viscosity index improving copolymer solution following the teachings of Suzuki,
including performing the comparative examples thereof, would not have arrived at the claimed viscosity
index improving copolymer solutions, particularly when employing styrenic monomers at the lower end
of the weight percent and ratio ranges taught and exemplified for this reactant (pages, e.g., 2, 3 and 5-
6).
Thus, on this record, we are of the view that the examiner has sustained his burden of
establishing that the viscosity index improving copolymer solutions prepared as taught in Suzuki are
prima facie identical or substantially identical to the viscosity index improving copolymer solutions
defined in product-by-process style in appealed claim 8 even though produced by a different process,
in order to make out a prima facie case of anticipation under § 102(b) and of obviousness under §
103, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re Best, 562 F.2d 1252, 1255-56, 195
USPQ 430, 433-34 (CCPA 1977); In re Wertheim, 541 F.2d 257, 271, 191 USPQ 90, 103-04
(CCPA 1976), even though the process of product-by-process claim 8 presented in claim 1 has been
held to be nonobvious over the combined teachings of Suzuki and Jarvis. See Wertheim, supra.
Having again carefully reconsidered all of the evidence of anticipation and non-anticipation and
of obviousness and non-obviousness, see generally Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444;
Spada, 911 F.2d at 708, 15 USPQ2d at 1657, we find that appellant has not carried his burden of
establishing by effective argument and/or objective evidence that the claimed invention patentably
distinguishes over the teachings of Suzuki. Spada, supra; Best, supra. Indeed, appellant has done no
9 We noted above that appellant sets forth in his specification that “current environmental and health
concerns dictate that the amount of residual styrenic monomer present in any commercial embodiment
of the copolymer be reduced to a level below 1000 parts per million” (page 1). We find no evidence in
the record which establishes whether the limitation on the amount of residual styrenic monomer in the
copolymer originated with appellant in reaction to such “concerns,” was suggested by others or dictated
by regulation. See In re Nomiya, 509 F.2d 566, 574, 184 USPQ 607, 613 (CCPA 1975) (“The
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