Appeal No. 1997-2874
Application 08/219,160
describing polymers having that restriction on the carboxylic acid content. Nor does the
examiner show sound basis for believing that the products of the applicants and the prior art
are the same. The working examples of Woodberry are carried out at relatively high
temperatures and relatively low pH values, and the examiner has not established that those
examples reasonably appear to prepare products which are the same as those recited in the
appealed claims.
The Woodberry process could be modified by selecting relatively low
temperatures, for example, room temperature, and relatively high pH values, for example, pH of
8, per the generic teachings in column 2, lines 22-44, of the reference. However, the mere fact
that the prior art could be so modified would not have made the modification obvious unless
the prior art suggested the desirability of the modification. In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). That is not the case here. On this record, the reason,
suggestion, or motivation to use “mild conditions” during hydroxamic acid formation stems from
applicants' specification, not the cited prior art. As explained in the specification, using “mild
conditions” minimizes hydrolysis and gives rise to products having a low carboxylic acid
content (specification, page 12, lines
22-25).
The rejection of claims 1-7 and 15-24 under 35 U.S.C. § 102 as anticipated by or, in the
alternative, under 35 U.S.C. § 103 as unpatentable over Woodberry, is reversed.
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