Appeal No. 1999-1071
Application 08/453,770
analogous (meth)acrylate functional compositions”. (answer, page
5).
Appellants argue that Misura relates to a thermal curing
process rather a curing process by UV light. Appellants argue
that Misura’s composition does not include a photoinitiator, and
is not curable to form a substantially clear eyeglass lens by
exposure to UV light. Appellants argue that one having ordinary
skill in the art would not look to a thermally curable
composition to prepare a composition to be cured by exposure to
UV light to form a substantially clear eyeglass lens in less than
one hour. (brief, page 14).
The examiner rebuts and states that substitution of an
aromatic bis(allycarbonate), as taught by Misura, for the
aliphatic bis(allylcarbonate) monomer disclosed in Kaetsu “would
not be expected to affect the photopolymerizability of the
compositions disclosed by Kaetsu”. The examiner further states
that the compositions disclosed by Misura, as thermally curable,
and by Kaetsu, as being photocurable, are analogous because the
components of the disclosed compositions are analogous
(bis(allycarbonate monomers, poly(meth)acrylate monomers, peroxy
initiators, such as benzoyl peroxide), and are disclosed by
patentees as being useful for forming lenses. The examiner states
that “[f]or these reasons, the disclosures of the two references
are considered to be analogous”. (answer, page 11).
We note that beyond looking to the prior art to determine if
it suggests doing what the inventor has done, one must also
consider if the art provides the required expectation of
succeeding in that endeavor. In re Dow Chem., 837 F.2d 469, 473,
5 USPQ2d 1529, 1532 (Fed. Cir. 1988) (“Both the suggestion and
the expectation of success must be founded in the prior art, and
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007