Appeal No. 1998-1411 Page 3
Application No. 08/562,316
Claims 1-4 and 6-17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Hill or
Hofmann in view of Dammel1. We reverse for the following reasons.
OPINION
The primary references, Hill and Hofmann, each describe photopolymerizable compositions
containing a polymer selected from the group consisting of acrylic polymers and methacrylic polymers,
an ethylenically unsaturated monomer, a photoinitiator, and a solvent. See for instance, Example 1 of
Hill which includes methylene chloride (a solvent), polymethyl methacrylate (binder), 2-o-chlorophenyl-
4-m-anisyl-5-phenyl imidazolyl dimer (photoinitiator) and monomer. Neither Hill nor Hofmann list the
glass transition temperatures (Tg) for the acrylic and methacrylic polymers they describe. It is the
Examiner’s position that the exemplified polymethyl methacrylate polymers and copolymers of Hill and
Hofmann inherently have Tgs within the claimed range.
We are cognizant of the fact that, “[f]rom the standpoint of patent law, a compound and all of
its properties are inseparable” In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963)
and thus the mere recitation of a newly discovered property, inherently possessed by a prior art
1The Examiner no longer relies on U.S. Patent 4,692,396 issued to Uchida to reject the claims
(Answer, page 3). The statement of rejection on page 4 of the Answer contains a typographical error,
“in view of Hofmann” should be “or Hofmann” as stated in the final rejection as Hofmann is relied on as
a primary reference. At the Oral Hearing, Appellants confirmed that their arguments are directed to
Hofmann as used as a primary reference.
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