Appeal No. 2006-1673 Παγε 7
Application No. 09/913,725
Yano. While the examiner asserts that the addition of a liquid
ethylene-alpha-olefin oligomer to the porous film composition of
Yano would be expected to improve the dispersibility and process-
ability of the molding composition of Yano, that assertion is not
backed up with adequate evidence or scientific reasoning to
substantiate that argued suggestion, with a reasonable
expectation of success in so doing, for the different porous
molding composition used by Yano. In this regard, the examiner
has not fairly established how Takayama would have suggested the
applicability (with a reasonable expectation of success) of the
lubricant compositions disclosed therein for a porous resin
composition, like or similar to that disclosed by Yano, given the
differences between the molding composition of Takayama and the
molding composition taught by Yano.
In particular, appellants note that the lubricant (component
(E) of Takayama is disclosed as being useful when the resin
includes components (A)-(D), described at columns 2-5 of
Takayama. Otherwise, compatibility issues and other problems,
such as with the desired abrasion resistance, arise. See, e.g.,
pages 2-4 of the reply brief filed October 22, 2004 and pages 3
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