Appeal No. 2002-1622 Page 4
Application No. 08/735,836
combination of prior art does not teach or suggest all the claim limitations, in particular, the
limitation that polymer (a) be immiscible with polymer (b).
To address Appellants’ argument, it is necessary to first determine how the claim should
be interpreted. Claim 1 is directed to a composition. As such, the claimed mixture must be
distinguished from the prior art on the basis of its composition and structure. C.f. In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985)(Determination of patentability is based
on the product itself.). Differences in how the product was produced will not render a product
which is the same or obvious from a prior art product patentable. Id. No can a mere difference
in terminology render the claims patentable. See In re Skoner, 517 F.2d 947, 950, 186 USPQ 80,
82 (CCPA 1975). In terms of structure, a mixture of immiscible polymers is a heterogeneous
mixture. If the prior art describes or suggests a polymer mixture of (a) and (b) which is
heterogeneous, a prima facie case of unpatentability is established.
The Examiner has presented a reasonable basis to believe that the mixture taught by
Birkholz is a heterogeneous mixture of PVP particles in organosiloxane polyurea block
copolymer. This belief is based upon the use of “dispersed” to describe the addition of calcium
carbonate and PVP to the silicone urea block copolymer (Birkholz at col. 3, ll. 14-17) and the
characterization of PVP as being “dispersed” throughout the copolymer (Birkholz at claim 1).
The word “dispersed” is commonly used in the chemical arts to describe the dispersion of one
substance, as small particles, in another substance. Therefore, it is reasonable to believe that this
is what is meant in Birkholz.
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