Appeal No. 1998-3209
Application 08/338,284
crystalline propylene homopolymer even though the silane compound used in the preparation of
the homopolymer of Example 14 is not a specified silane of appealed claim 1. Accordingly, the
burden falls upon appellants to establish by effective argument and/or objective evidence that the
claimed invention patentably distinguishes over Cohen Example 14 even though the rejection
here is under § 103(a). See Thorpe, supra; In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430,
433-34 (CCPA 1977); Wertheim, supra; In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324,
325-26 (CCPA 1974); Brown, supra.
Accordingly, since a prima facie case of obviousness has been established over Cohen,
we have again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole, giving due consideration to the weight of appellants’ arguments. In re
Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have carefully considered appellants’ arguments. Appellants’ argument that Cohen
would not have taught or suggested the “cyclopentyl” substituted silanes of appealed claim 1 to
one of ordinary skill in this art even though the “cyclopentyl” is taught as a suitable substituent
for the silane compound (col. 5, lines 55-68, and col. 11, line 44, to col. 12, line 2), because a
“cyclopentyl” substituted silane is not disclosed to be a preferred embodiment and is not an
exemplified embodiment (brief, pages 12-13; reply brief , pages 3-4) is clearly contrary to
applicable authority. See generally, See Merck v. Biocraft, 874 F.2d at 807, 10 USPQ2d at
1846, quoting In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“But in a
section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not
controlling, since all disclosures of the prior art, including unpreferred embodiments, must be
considered.’”). Indeed, it would have been readily apparent to one of ordinary skill in this art
that a “cyclopentyl” substituted silane would function in the same or similar manner as the other
silanes falling within the specified formula for the purposes for which it is used by Cohen. As
the examiner points out, “the cyclopentyl group is one of only thirteen species” encompassed by
the formula (answer, page 8). See Merck v. Biocraft, supra; Lemin, supra; cf. In re
Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982) (“[T]he fact remains that one of
ordinary skill informed by the teachings of [the reference] would not have had to choose
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007