Appeal No. 1997-3376
Application No. 08/176,187
product (supplemental answer, page 3). We do not agree, because
this is a material limitation that further defines the structure
of the final product. In the present case, the examiner has not
proffered any evidence or sound technical reasoning as to why the
presently claimed discrete and continuous phases would inherently
form simply by increasing the amount of the tri-block copolymer
in Bates.3 Contrary to the examiner’s stated position, Bates
teaches exactly the opposite. Specifically, Bates states that
the strengthening member (i.e., the dopant polymer) is an
“intrinsic part of the conducting polymer matrix ” (last sentence,
third paragraph, left column, page 871). Therefore, Bates does
not contemplate the conducting polymer to be a discrete phase
within a continuous matrix of the tri-block copolymer. Nor is
there any motivation, suggestion or teaching in the prior art
that would have led one of ordinary skill in the art to modify
Bates to form a polypyrrole discrete phase within a continuous
matrix of dopant polymer.
Regarding the amount of the tri-block copolymer, we do not
find any teaching in Bates, or any other applied reference, to
modify sample 6 by using significantly higher amounts (e.g.,
3 Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20
USPQ2d 1746, 1749 (Fed. Cir. 1991); In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981); Ex parte Levy, 17 USPQ 1461, 1464 (Bd.
Pat. App. & Inter. 1990).
6
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