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
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