Appeal No. 2002-0701
Application 09/201,269
The examiner argues that “[a]lthough there is no disclosure
of the amount of residual monomer, given that Oshima et al.
disclose an initiator having half-life at polymerization
temperature as presently claimed, it would have been obvious to
one of ordinary skill in the art that such an initiator would
intrinsically function so as to produce the amount of residual
monomer as presently claimed” (answer, page 9). As discussed
above, the examiner has not established that the applied
references would have fairly suggested, to one of ordinary skill
in the art, using Oshima’s initiator in Houser’s and Puschak’s
polymerizations. Moreover, the examiner has not established that
even if that substitution were made, the mere fact that Oshima’s
organic peroxides have a half-life of 1 minute at a temperature
between 100 and 270ºC indicates that they necessarily would
result in less than 0.5 wt% residual monomer in Houser’s and
Puschak’s polymerizations. See In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981) (An inherent characteristic must be
inevitable, and not merely a possibility or probability).
For the above reasons we conclude that the examiner has not
carried the burden of establishing a prima facie case of
obviousness of the methods claimed in the appellant’s claims 19-
22 over Houser or Puschak, in view of Margotte or Oshima.
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