Appeal No. 1999-0125
Application 08/427,534
knowledge generally available to one of ordinary skill in the art would provide a suggestion or
motivation to use such other polymerization systems, particularly solution addition-
copolymerization, with a reasonable expectation of success in obtaining the polymer products
taught by Vachon, in order to establish a prima facie case of obviousness over the applied prior
art. See, e.g., Dow Chem., 837 F.2d at 473, 5 USPQ2d at 1531 (“The consistent criterion for
determination of obviousness is whether the prior art would have suggested to one of ordinary
skill in the art that [the claimed process] should be carried out and would have a reasonable
likelihood of success viewed in light of the prior art. [Citations omitted] Both the suggestion and
the expectation of success must be founded in the prior art, not in the applicant’s disclosure.”).
This, the examiner has not done by relying on the general teachings of Billmeyer.
We agree with appellant that Billmeyer merely “discusses various advantages and
disadvantages of each” of several polymerization systems, and indeed, Table 12-1 (page 356)
shows that solution polymerization and emulsion polymerization are different (brief, pages 8 and
10-11). The examiner takes the position that from such teachings, “the skilled artisan would
have found it obvious to select any well known polymerization technique (such as bulk or
solution), for the polyester of Vachon, since all have been for many years wherein the skilled
artisan readily acknowledges the advantages/disadvantages and any differences between the use
of each technique,” and thus would have been motivated by the selection of “advantages” to use
the polymerization system specified in the appealed claims (answer, page 5; see also page 8).
Appellant argues that even though the process of Vachon could be so modified, there must be a
suggestion of the desirability of doing so (brief, page 12). We agree with appellant.
On this record, the examiner has merely established that it would have been “obvious to
try” other polymerization systems which is an impermissible standard for determining
patentability under 35 U.S.C. § 103(a). See generally, In re O’Farrell, 853 F.2d 894, 903-04,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988). Indeed, the mere fact that the polymerization systems
specified by the appealed claims and by Vachon are well known and have recognized advantages
does not establish that one of ordinary skill in the art would have recognized from consideration
of the known advantages alone that the products of Vachon taught to be successfully obtained
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