Appeal No. 1999-0981
Application 08/787,895
are simply not the carbon and hydrogen containing product of any polymerization process using
any hydrocarbon monomer that contains any type of impurity as the examine contends.
Thus, we must conclude that the claim in fact set outs and circumscribes a particular area
with a reasonable degree of precision and particularity, and accordingly, we reverse the ground of
rejection under § 112, second paragraph.
In view of the requirements for a “hydrocarbon resin” in claim 14, the examiner must
provide evidence in support of the allegation that “VLDPE[, that is, very low density
polyethylene,] meets the . . . definition of a ‘hydrocarbon resin’ since it is made solely of
hydrogen and carbon” (answer, page 6) in order to establish that the claimed thermoplastic multi-
layer film would have been prima facie obvious over Mueller or the combined teachings of
Mueller and Bossaert. Indeed, on this record, it seems that the only similarity between “VLDPE”
and a “hydrocarbon resin” is hydrogen and carbon, as there appears to be a distinct difference in
polymeric structure. As pointed out by appellant (brief, pages 14-17), the examiner has not
provided such evidence. With respect to the combined teachings of Mueller and Bossaert, we
find that the examiner has not explained why one of ordinary skill in this art would have been
motivated to substitute a “hydrocarbon resin” of Bossaert for the apparently dissimilar “VLDPE”
or for the copolyester in the polymer blend used in layers 42 and 50 of the multi-layer film of
Mueller, and particularly has not addressed appellant’s contention that such a substitution would
not provide a barrier film within the teaching of Mueller. Indeed, the fact that the multi-layer
film of Mueller could be modified by using the hydrocarbon resin disclosed by Bossaert does not
alone provide the basis for combining the applied prior art. See, e.g., In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
Accordingly, we reverse the grounds of rejection under § 103(a).
4 Sybil P. Parker, ed., New York, McGraw-Hill, Inc. 1994.
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