Appeal No. 97-1922
Application No. 08/356,573
elevated temperatures” (page 5 of principal brief, last
sentence).
In response to appellants’ arguments for nonobviousness,
the examiner states the following at page 4 of the answer:
Appellants’ suggestion that the compounds cannot
withstand the temperatures and/or stretching of the
processing in the film stretching without being
adversely affected is a non-persuasive argument
because the same compounds are being disclosed in
the prior art as are being utilized in the instant
invention as claimed and they would have the same
property characteristics and the same associated
ability to withstand temperature and/or stretching
without being adversely affected. Since the same or
similar materials are going to operate in the same
or similar manner, with a reasonable expectation by
one of ordinary skill in the requisite art, this
combination of teachings renders the scope of the
protection sought prima facie obvious.
Manifestly, the examiner’s response begs the question of
whether one of ordinary skill in the art would have reasonably
expected that the antistatic compositions of Jonas would
withstand the elevated temperatures associated with the
biaxial stretching operations of Tanabe. Clearly, the same
antistatic composition that is both presently claimed and
disclosed by Jonas would have the same inherent properties and
characteristics, but the examiner has pointed to no
recognition in the prior art that the antistatic compositions
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