Appeal No. 2006-0977
Application 10/250,605
protection sought by the appealed claims. We direct attention to 2
the examiner’s discussion at page 10 of the answer, last paragraph.
Also, appellants have not refuted the reasonable criticism
lodged by the examiner that “[i]t is unclear whether the moldability
and crack resistance is [sic, are] solely a function of the presence
of the thiodiphenol or whether the significantly different types and
amounts of polyhydric phenol compound (b-2) materially affects the
results” (page 10 of answer, first paragraph). It is well settled
that for comparative results to be indicative of non-obviousness
they must be truly comparable and not lost in a welter of variables.
To the extent that appellants may have found that the inclusion
of the thiophenol in the composition obviates the need for a
conventional flame retardant, the examiner properly points out that
it is not necessary for a finding of obviousness that the prior art
appreciate all the advantages of a known composition, nor is it
necessary that one of ordinary skill in the art would have
formulated the known or obvious composition for the same reason as
appellants.
Appellants also contend that “the composition of JP ‘349
differs signficantly from that of claim 1 of the present application
2In re Grasselli, 713 F.2d 731, 743, 218 USPQ 769-78 (Fed.
Cir. 1983).
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007