Appeal No. 1999-0381
Application No. 07/776,014
unexpected properties (Paper No. 21).1 This declaration relies on Examples 9 through 12
in the specification (declaration, paragraphs 11 and 12). Through these examples,
appellant seeks to show that the claimed compositions result in compositions with a
melting points of 36 or 37 oC even though a minimum of 70% of the composition is a
component with a melting point of less than 10 oC (declaration, paragraph 11). Because
of this unexpected high melting point, the compositions “provide the advantage of allowing
precise control over a melting point while also enabling a wide range of viscosities for a
given melting point to fit a variety of molding equipment [sic]” (id.).
The examiner admits that these examples do show unexpected results (examiner’s
answer, page 6). However, the examiner contends that “the instant claims are not directed
to a composition of the scope of examples 9-12 and the appellant's declaration does not
show that the composition of the scope of the instant claims gives
the unexpected result demonstrated by the Nieh declaration of 1/24/96 [Paper No. 21]”
(examiner’s answer, page 6). According to the examiner,
… it is the examiner's position that there may be other
parameters, in addition to the functional requirements of the
instant claims, required to obtain the results of the appellant's
examples 9-12. The degrees of crystallinity, end groups,
molecular weights, polydispersity index, additives, and other
physical properties of the ingredients of the instant claims are
expected to materially affect the unexpected result of the
appellant's examples 9-12. These parameters are not
1 The second declaration from Edward C.Y. Nieh (Paper No. 35) was deemed untimely and, thus, not
considered by the examiner (examiner’s answer, page 11). Accordingly, we do not reach it in our
deliberations on the merits of the rejection.
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