Appeal No. 2004-1566
Application 09/452,982
Therefore, while one skilled in this art would recognize that the copolymer is capable of
being reacted with a primary amine falling within the disclosed formula ENR3R4, there is no
direction in Krull to do so. Cf. In re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA
1972). Indeed, to the extent that the examiner’s position is that one skilled in this art would
arrive at a copolymer identical or substantially identical to the copolymer defined in appealed
claim 42 by following the synthesis routes set forth in Krull, the analysis necessary to support
such a position is not set forth in the record. See generally, Spada, 911 F.2d at 708-09, 15
USPQ2d at 1657-58 (“The Board held that the compositions claimed by Spada ‘appear to be
identical’ to those described by Smith. While Spada criticizes the usage of the word ‘appear’, we
think that it was reasonable for the PTO to infer that the polymerization by both Smith and Spada
of identical monomers, employing the same or similar polymerization techniques, would produce
polymers having the identical composition.”); In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964,
966 (Fed. Cir. 1985); In re Best, 562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977).
Accordingly, we determine as a matter of fact that Krull does not describe the claimed
invention within the meaning of § 102, and thus reverse the ground of rejection.
The examiner’s decision is reversed.
Reversed
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007