Ex Parte ROTH et al - Page 9




                  Appeal No. 1997-3036                                                                                                                    
                  Application No. 08/268,094                                                                                                              


                  methacrylic acid and acrylic acid.  (Takiyama, col. 3, lines 34-39).  In carrying out the reaction,                                     
                  the epoxy compounds and the acid are used in such amounts that the total carboxyl groups of the                                         
                  acid is at least 0.1 mol to each mol of the epoxy group of the epoxy compound, preferably the                                           
                  total carboxyl groups range from 0.2 to 1.2 moles per epoxy group.  (Takiyama, col. 4, lines 23-                                        
                  33).  Accordingly, Takiyama disclose the formation of both partial and fully acrylated epoxy                                            
                  compounds.  Yet, as with Fekete, Takiyama fails to disclose appellants' claimed epoxy acrylates                                         
                  of formula (III) with acrylate side radicals M or an epoxy acrylate of formula (III) with one                                           
                  acrylate end group and one aromatic bifunctional compound having an -OH radical as the other                                            
                  end group.  Consequently, Takiyama fails to provide the requisite motivation or suggestion                                              
                  necessary for the person skilled in the art to modify the disclosed unsaturated ester resins and                                        
                  form appellants' claimed epoxy acrylate.                                                                                                


                  Secondary References                                                                                                                    
                           The Green Reference                                                                                                            
                           Green teaches novel epoxide resins for use in the preparation of printing plates and                                           
                  printed circuits.  (Green, col. 12, lines 8-18).  Green's epoxide resins are capable of                                                 
                  polymerization on exposure to actinic radiation and have, per average molecule, at least two                                            
                  photopolymerizable groups and also at least two 1, 2-epoxide groups.  (Green, abstract).  To                                            
                  improve the adhesion of the epoxide resins, Green teaches that the epoxide resins contain a                                             
                  glycidyl ether group attached to a secondary carbon atom.  (Green, col. 1, line 60 to col. 2, line                                      
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