Appeal No. 2006-0646
Application 10/465,194
claimed copolymers (answer, pages 4 and 6). The examiner further alleges that in view of
“substantially identical” composition and “material properties” for the claimed copolymers and
LLDPE C, there is “a reasonable basis to believe that the claimed n-hexane extractable property
is inherently possessed” by LLDPE C, and “that such a minor difference in melting temperature
. . . is within the experimental error of the DSC testing equipment” (answer, pages 5, 6 and 7-8).
On this basis, the examiner submits that the references provide “a reasonable basis to
believe” that LLDPE C falls within claim 48, including the amount of ethylene, 1-hexene as the
alpha-olefin comonomer and the specified properties, rendering the same anticipated or obvious,
citing In re Fitzgerald, 619 F.2d 67, 70-71, 205 USPQ 594, 596-97 (CCPA 1980); In re Best,
562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977).
We agree with appellants that there is little evidence in the meager property information
provided for LLDPE C in Lustig Table 3 which supports the examiner’s position. The
differences in certain properties between the claimed properties and the properties described for
LLDPE C and the absence of information with respect to other claimed properties is not cured by
unsupported allegations of “experimental error” in determining the properties of LLDPE C
reported in Lustig Table 3, and by imputing other properties to LLDPE C from those disclosed
by Lustig for VLDPE specifically described therein. Furthermore, that there are “usually” three
possibilities for the alpha-olefin comonomer for LLDPE produced with several different kinds of
catalysts as acknowledged by Lustig, does not provide evidence establishing as a matter of fact
that LLDPE C is prepared with 1-hexene using a catalytic method that would result in the
copolymer having properties as claimed. In this respect, we find that Lustig very generally
describes the complex state of the art of LLDPE. Cf., e.g., “Olefin Polymers (Polyethylene),”
17 Kirk-Othmer Encyclopedia of Chemical Technology, 704-05, 756-65 (4th ed., New York,
John Wiley & Sons, 1996) (copy not provided).
Thus, on this record, we fail to find substantial evidence from which it would have
reasonably appeared to one skilled in this art, with respect to § 102(b), or to one of ordinary skill
in this art, with respect to § 103(a), that the copolymer LLDPE C as disclosed by Lustig would in
fact be identical or substantially identical to copolymers falling within appealed claim 48, as we
interpreted this claim above. See In re Spada, 911 F.2d 705, 708-09, 15 USPQ2d 1655, 1657-58
(Fed. Cir. 1990) (“The Board held that the compositions claimed by Spada ‘appear to be
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