Appeal No. 2005-1907 Page 11
Application No. 09/909,898
1984). Rebuttal may take the form of a comparison with the prior art showing that any
differences are not merely normal expected variations but would have been unexpected by those
of ordinary skill in the art. See In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed.
Cir. 1997); In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973). Appellants
make a comparison between membranes made with a C1 group as “A” in formula (2) as in
Terada and MacDonald versus a C4 group, as “A” as encompassed by the claim. We agree with
Appellants that such a comparison reflects the closest prior art, but this single comparison is not
commensurate-in-scope with the claims. The claims encompass many other monomers and
Appellants provide no evidence that the results would be similar for the other monomers.
Furthermore, Appellants have not convinced us that the differences in heat durability and other
properties discussed in the Brief and Reply Brief would not have been expected by one of
ordinary skill in the art. There is no statement in the specification that the variations would have
been unexpected. Moreover, as evidenced by Tomoi, heat durability was known to be improved
with the use of the monomers in which n is from 3 to 18, i.e., “A” is a C3-18 group.
Remand to the Examiner
We also remand this application to the Examiner to consider a rejection including
MacDonald and Tomoi as evidence of unpatentability with regard to the product claims 1-4, 11,
and 12. As discussed in regard to the process claims, the evidence supports the finding that there
is a suggestion to use the precursor monomer of Tomoi (col. 5, ll. 28-45) in the method of
MacDonald (col. 8, ll. 5-24 referencing col. 7, ll. 42-47) to make an anion selective membrane
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