Appeal 2006-1219
Application 10/636,148
than 5 µm” is based on (1) changes to patentee’s process which are driven
by hindsight and (2) speculation as to the properties which would develop as
a result of such changes. We note that the Examiner merely suggests the
possibility that a person of ordinary skill in the art may eliminate the use of
the precipitant and lower the amount of DVB in Meitzner’s process.
However, the fact that the prior art could have been modified in a manner
consistent with Appellants’ claims would not have made the modification
obvious unless the prior art suggested the desirability of the modification. In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
As correctly pointed out by the Appellants, “Meitzner contains no
disclosure . . . related to beads with ‘no void spaces having a diameter
greater than 5 µm’” (Br. 6). Appellants are also correct in arguing that
“[Meitzner] in no way suggests that . . . [the precipitant] be omitted” (id.).
We note that Meitzner clearly teaches that “the use of precipitant results in
the formation of . . . [a] desirable [microchannel] structure” (col. 5, ll. 14-
15). The Examiner also acknowledges the desirability of this feature in the
bead of Meitzner (Answer 4). Thus, the Examiner’s contention that it would
have been obvious to eliminate the precipitant is contrary to Meitzner’s
express teaching that the use of precipitant results in a desirable structure.
We note that the Examiner’s contention that it would have been
obvious to “lower[ ] the amount of crosslinking agent . . . disclosed by
Meitzner to the amounts claimed by applicants . . . to achieve desired
physical properties of a polymer depending of its end use” (Answer 3) is
also contrary to the teachings of Meitzner for reasons further explained
below.
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