Appeal No. 1999-0125
Application 08/427,534
from the combination of reactants by the use of an emulsion polymerization system, can also be
successfully obtained by the use of a solution polymerization system.4
The examiner’s decision is reversed.
Reversed
CHUNG K. PAK )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
Morgan Lewis & Bockius LLP
4 In Appeal No. 96-0007 in parent application 08/104,980, a prior merits panel of this Board
considered claims to a resin composition characterized as prepared by the process claimed in the
present appeal. That panel, in affirming a ground of rejection based on Vachon but without
Billmeyer, held that “[w]hile . . . bulk and solution polymerization specified in appealed claim 1
is different from aqueous emulsion polymerization utilized by Vachon and . . . this reference
discloses only aqueous emulsion polymerization, we do not find the arguments submitted by
appellant to effectively establish that the acrylic-modified polyester resin compositions formed
from the same polyesters and ethylenically unsaturated vinyl monomers in the same
concentrations by different polymerization processes are not identical or substantially identical”
(decision, page 6). Our reversal of the ground of rejection of appealed claims drawn to the same
process is not inconsistent with the prior panel’s decision. See In re Wertheim, 541 F.2d 257,
271, 191 USPQ 90, 103-04 (CCPA 1976) (“These claims are cast in product-by-process form.
Although appellants argue, successfully we have found, that the [reference] disclosure does not
suggest . . . appellants’ process, the patentability of the products defined by the claims, rather
than the processes for making them, is what we must gauge in light of the prior art.”).
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