Appeal No. 1997-3621
Application 08/094,392
Based on the evidence in the record, we must agree with appellants that the examiner has failed
to demonstrate that any of the branched polyester copolymers in Table 7 of Kricheldorf have at least
40% branching. Indeed, when the mole ratios favoring the bi-functional monomer
by at least “5:1” are considered in light of equations “(1)” and “(3)” at page 1827 of Kricheldorf, it
reasonably appears that the linear moieties “-(-C-)n-” derived from this monomer would form much
more than 60% of the polymer. On this basis, and in the absence of evidence or explanation to the
contrary by the examiner, we must agree with Dr. Frechet’s analysis in ¶ 6 of his declaration. See also
the present specification, paragraphs bridging pages 3-4 and 5-6.
Accordingly, as a matter of fact, none of the six branched polymers of Kricheldorf reasonably
appears to be identical to those claimed and thus, this reference does not prima facie anticipate the
claimed branched polymers. See Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58. Furthermore,
we find that Kricheldorf does not disclose any utility for the branched polymers and the examiner has
not established on this record that one of ordinary skill in this art would have recognized that such
polymers would have utility. Thus, we agree with appellants, relying on In re Stemniski, 444 F.2d 581,
585-86, 170 USPQ 343, 347 (CCPA 1971) (brief, pages 4-5), that there is no factual basis on which
to predicate a teaching, suggestion or motivation to modify the teachings of Kricheldorf in order to
arrive at the claimed branched polymers, and, therefore, no prima facie case of obviousness.
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