Appeal No. 2005-0590
Application 09/854,435
contending that this person would have understood that Heller is “directed to a random
copolymer,” and while Sparer “does permit random copolymerization,” that for Sparer to
“achieve the stated goal of providing a thermoplastic elastomer, the poly(ortho ester) can not be
a random copolymer but must be a block copolymer” (brief, page 5). Thus, appellants argue that
no reason has been advanced for making the proposed modification.
In order to render the claimed polyorthoesters obvious within the meaning of § 103(a),
the combined teachings of Heller and Sparer must provide an enabling disclosure that places the
claimed polyorthoesters in the possession of the public. Payne, 606 F.2d at 314, 203 USPQ at
255. Here, as we found above, Sparer discloses the preparation of random polyorthoester
polymers as does Heller. Appellants’ contrary allegations that one of ordinary skill in this art
would necessarily have to form a block copolymer to obtain the thermoplastic elastomeric
polyorthoesters of Sparer are unsupported and thus, are entitled to little, if any, weight,
particularly since appellants’ position, in this respect, encompasses the allegation that Sparer
does not operably enable the random polyorthoester polymers encompassed by, e.g., Sparer
patent claim 1. See Payne, 606 F.2d at 315, 203 USPQ at 256; In re Lamberti, 545 F.2d 747,
751, 751 n.2, 192 USPQ 278, 281, 281 n.2 (CCPA 1976); In re Weber, 405 F.2d 1403, 1406-07,
160 USPQ 549, 552-53 (CCPA 1969).
We find that appellants have failed to carry the burden of establishing the patentability of
the claimed polyorthoester polymers encompassed by appealed claim 1 over the combined
teachings of Heller and Sparer by presenting effective argument or objective evidence
establishing that the claimed polyorthoester polymers possess unexpectedly advantageous or
superior properties. See Payne, 606 F.2d at 315, 203 USPQ at 256.
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Heller and Sparer with
appellants’ countervailing evidence of and argument for nonobviousness and conclude that the
claimed invention encompassed by appealed claims 1 through 14 and 17 through 19 would have
been obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
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