Appeal No. 2001-1986
Application No. 08/719,968
2000, preferably less than 300 . . . is introduced into a
skeleton of the hard segment.
(Nakatsukasa at 5, ll. 17–37.) With this understanding of the structure and function of the R4
moiety, Appellant’s prepolymer, which has the structure
Y1—X1—(P1—X1)n—Y1,
cannot be read on Nakatsukasa’s urethane prepolymer because there is no structure corresponding to
the repeated moiety P1. (P1 is defined in claim 22 as the reaction residue of a diol of one of the
hydrogenated polymers of butadiene, isoprene, or styrene, or styrene-butadiene copolymer, and
various other recited mixtures.) Nakatsukasa’s prepolymer has only a single soft segment that
corresponds to Appellant’s P1 moiety. Accordingly, hydrogenation would not result in Appellant’s
prepolymer, and a prima facie case of obviousness of the subject matter of the claims on appeal
cannot be made out over Nakatsukasa, alone or in view of the secondary references, which do not
address the structure of the urethane prepolymer.
Rejections over Scheve and secondary references
Scheve teaches polymerizable compositions comprising: (1) a liquid unsaturated polyester;
(2) a terminally unsaturated urethane prepolymer; (3) at least one addition polymerizable monomer;
(4) at least one photoinitiator; and (5) at least one thermal polymerization inhibitor. (Scheve at
col. 2, ll. 17–33.) Scheve teaches that such compositions are selectively exposed to actinic radiation
and developed to form printing plates. (Id. at col. 6, l. 66, through col. 7, l. 29.) Components 2) and
3) of the composition recited in Appellant’s claims 22 and 23 read on Scheve’s components (3)
and (4). The composition recited in claim 23 is open to unrecited components without restriction
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