Appeal No. 2001-1986
Application No. 08/719,968
longer. In my view, the examiner set forth an adequate rationale in the paragraph bridging pages 6
and 7 of the Answer:
All the final plates have segments of polymerized
butadiene and/or polymerized isoprene which would
have residual double bonds susceptible to oxidation or
swelling by ink after imaging. It is this structure that
they have in common and this structure which varies in
the final plates if hydrogenated polymerized butadiene
and/or polymerized isoprene is used.
This rationale was set out during prosecution (See Paper No. 10, paragraph bridging pages 5 and 6)
and adhered to during the final rejection (Paper No. 13 at 4). For these reasons, a particularized
teaching relating specifically to urethane terminated polymer chains is not required. (Appellant has
not challenged the merits of this reasoning; rather, Appellant appears to take the position that the
references are not analogous. (Brief at 5–7.) Similarly, in the Reply, Appellant relies on the
declaration of Dr. Leach, who concludes, without construing the claimed subject matter, that “in my
opinion, neither Nakatsukasa nor Scheve teach or suggest the invention currently claimed by the
patent application.” (Leach Declaration at 3, Reply at 5.) Both positions, as shown supra, are not
supported in the record.)
Moreover, Scheve’s teaching of D and D’ as polyethylene moieties stands as confirmation of
the examiner’s rationale that it would have been obvious for one of ordinary skill in the art to use
hydrogenated polybutadiene to make Scheve’s polyurethane prepolymer. It cannot be denied that
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