Appeal No. 2003-2060
Application No. 09/133,691 Page 6
appellants, let alone shown that the claimed reaction product
necessarily results from the reacting the monomers described in
Jenkins.
Nor do we find that the teachings of Jenkins are sufficient
to render the claimed subject matter obvious to one of ordinary
skill in the art based on this record. In this regard, the
examiner has not reasonably established that one of ordinary
skill in the art would have been led to the claimed copolymer
reaction product having the claimed properties by way of
selection of a surfactant monomer, as called for in the claims,
for reaction with the other monomers based on the teachings of
Jenkins referred to by the examiner. The examiner’s reference to
In re Kerkhoven, 626 F.2d 846, 205 USPQ 1069 (CCPA 1980) at page
8 of the answer in support of the examiner’s position is
misplaced. This is so since the examiner is not here asserting
the combination of two known compositions for their expected
effect in forming a third composition as part of the case of
obviousness presented.
Consequently, we will not sustain either of the examiner’s
rejections over Jenkins.
With regard to the examiner’s § 102(a or e) and § 103(a)
rejections of claims 1 and 3-9 over Tanaka, the examiner has
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