Ex Parte ROTH et al - Page 10




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


                  20).  One class of preferred epoxide resins includes acrylate photopolymerizable groups.  (Green,                                       
                  col. 2, lines 31-46).  The acrylate photopolymerizable group can be a repeating unit with pendant                                       
                  side chains -OX where X represents a hydrogen atom or a glycidyl group such that at least one                                           
                  group X is a glycidyl group.  Indeed, in a preferred embodiment the preferred epoxide resins                                            
                  contain 3 to 10 of the acrylate photopolymerizable groups each having a pendant glycidyl group.                                         
                  (Green, col. 3, lines 12-36).  One preferred subclass of epoxide resins includes those of Formula                                       
                  XXIV where the epoxide resin possesses two glycidyl end groups and one or more pendant                                                  
                  glycidyl groups.  Yet another preferred subclass of Green's epoxide resins is depicted in Formula                                       
                  XXIX where a partially postglycidylated epoxy resin is shown to possess acrylate end groups.                                            
                  (Green, col. 6).  Green, however, fails to disclose the reaction of an ethylenically unsaturated                                        
                  monocarboxylic acid with the postglycidylated epoxy resins to form an epoxy acrylate having                                             
                  pendant acrylate groups such as that described by appellants' claim 11, formula III.  Failing to                                        
                  teach the formation of pendant acrylate groups, Green, as a secondary refernece, could not have                                         
                  motivated one skilled in the art to modify the resins of Takiyama or Fekete to form appellants'                                         
                  claimed epoxy acrylates with pendant acrylate moieties or appellants' claimed epoxy acrylate of                                         
                  formula III when n is 0, Q is hydrogen and L possesses an acrylate end group.                                                           


                           The Kajiwara Reference                                                                                                         
                           Kajiwara relates to polyfunctional epoxy resins having two phenolic glycidyl ether                                             
                  groups, one or more alcoholic glycidyl ether groups and one or more alcoholic hydroxyl groups.                                          
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