Appeal 2006-1581 Application 10/2006-1581 A comparison of the argued limitations of Appellants' claim 1 with the applied art is set forth below. Element Claim 1 Tuzuki Matsuba (US or Kanegafuchi EP) Specific at least 0.5 at least 0.24 above 0.3c* at least 0.24c viscosity of second step polymer Specific at least 0.7 silent silent Silent viscosity of first step polymer *The Examiner makes additional findings that certain examples of Matsuba teach values of about 0.5 and about 0.56 (Answer, page 5). We cannot find where Appellants dispute these particular findings made by the Examiner. As pointed out by the Examiner in the Answer, Tuzuki teaches a specific viscosity based in chloroform of “at least about 0.24” for the second step polymer (Answer 4). On page 3 of the Reply Brief, Appellants argue that the value of “at least 0.24” is significantly lower than the value of “at least 0.5”. We base our affirmance of each of the §102(b)/103(a) rejections in the instant case with reference to In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), wherein the Court stated the following: While the art and science of polymer chemistry may be distinguished from that of simpler compounds and compositions, in Spada's case we conclude that the Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada's polymer latexes for lack of novelty. See, e.g., In re Thorpe, 777 F.2d 695, 697-98, 227 USPQ 964, 966 (Fed. Cir. 1985), wherein the examiner's rejection of product-by-process claims under §102/103, based on similarity of reactants, reaction conditions, and properties, amounted to a prima facie case of unpatentability. In response to the PTO's 4Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007