Appeal No. 1997-1943
Application 08/254,335
answer (pages 4-7).2,3 The examiner finds that even though Bauer teaches that the photopolymerizable
compositions have reduced adhesion to a support film when, inter
alia, a polycaprolactone of average molecular weight of between about 1500 and 40,000 is contained
therein, wherein an “average molecular weight of 15,000 is more effective than . . . [an] average
molecular weight of 40,000” (e.g., col. 2, lines 22-47, and col. 3, lines 1-6), one of ordinary skill in this
art would have employed a polycaprolactone having a weight average molecular weight of at least
50,000 in the compositions of reference with the reasonable expectation of successfully influencing the
adhesion properties of the tonable, photosensitive composition “because of the teachings of Bauer that
polycaprolactones are added to tonable, photosensitive compositions to reduce adhesion of the
photosensitive composition to a support film” (answer, pages 4-5). The examiner does not address the
limitations of claims 4 and 5 wherein the lower end of the range of the average molecular weight of the
polycaprolactone is 70,000 and 100,000, respectively.
We have carefully considered the reasons advanced by the examiner for thus concluding that a
prima facie case of obviousness has been made out over Bauer even though no evidence has been
adduced on this record of the chemical properties that one of ordinary skill in this art would have
reasonably expected of a polycaprolactone having an average molecular weight of 40,000 vis-à-vis one
having an average molecular weight of 50,000. On this record, we must agree with appellants (reply
brief, pages 2-3) that the examiner has not established a reasonable basis for his conclusion.
While Bauer may have disclosed that the molecular weight of polycaprolactone was a result
effective variable, this teaching extends only up to a polycaprolactone having an average molecular
weight of about 40,000, and thus we must look to the record to determine if it contains any indications
that one of ordinary skill in this art would have reasonably determined that optimization of the average
molecular weight of polycaprolactones used in the compositions of Bauer should be extended beyond
the end of the range taught by the reference. See In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95
2 This references is listed at page 3 of the answer. We refer to these references in our opinion by the
name associated therewith by the examiner.
- 2 -
Page: Previous 1 2 3 4 5 Next
Last modified: November 3, 2007