Appeal No. 1998-3087
Application 08/399,864
references and also over Pritchett taken alone.
The examiner has made an election of species requirement
(Office action mailed November 17, 1995, paper no. 5, pages 2-3).
Appellants elected for prosecution in this application the
species I-B-S-OH and I-EB-S-OH, where I is isoprene, B is
butadiene, S is styrene, and EB is hydrogenated butadiene
(response filed February 26, 1996, paper no. 6, page 2).
Appellants acknowledge in the brief (page 2) that they have
elected these species, and this acknowledgment is noted by the
examiner in the answer (page 4). There is no indication in the
record that any nonelected specie was examined. Consequently,
the issue before us is whether the elected species would have
been obvious to one of ordinary skill in the art over the applied
prior art. We therefore discuss only that issue and take no
position regarding the patentability of nonelected species which
are encompassed by appellants’ claims. See Ex parte Ohsaka, 2
USPQ2d 1461, 1461 (Bd. Pat. App & Int. 1987).
Rejection over Coolbaugh in view of Short, Pritchett,
Richards and/or Handlin, and further in view of Erickson
Claims 1, 2, 9-16, 19, 20 and 23
Appellants’ claims require that the polydiene polymer is
monohydroxylated. The examiner acknowledges that Coolbaugh does
not disclose such a polymer, and relies upon Short, Pritchett,
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