Ex parte SCHAUBER - Page 7


                 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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