Appeal 2006-2692
Application 10/480,360
comprises a polyethylene polymer inherently having a melt flow index of at
least 0.5g/10 min. at 190°C” as claimed (Answer 4).
According to the Examiner, “[b]oth [Hikmet] and the instant
application describe the polymer material to be polyethylene[] [and] [t]hus,
the material will inherently have equivalent characteristics such as melt flow
index and melting point” (Answer 4; Br. 10). Appellants submit that the
term “polyethylene” is generic and “there are a multitude of species of
specific polyethylenes” (Br. 10-11). Thus, Appellants argue there is no
inherency “by the mere disclosure in Hikmet of polyethylene” (id. 11). The
Examiner acknowledges Hikmet does not teach the melt flow index property
as claimed, and further contends the reference “does not disclose any
motivation to alter the melt flow index,” thus maintaining Hikmet “teaches
that the polymeric material used . . . is polyethylene” in the same kind of
process (Answer 6; original emphasis omitted).
Claim 1 requires any polymeric material which has the physical
property of a melt flow index of at least 0.5g/10 min. at 190°C, and thus, the
“polyethylene” disclosed by Hikmet must meet this limitation in order to
establish a prima facie case of anticipation and of obviousness. In order to
show that Hikmet’s “polyethylene” inherently meets the limitation, the
Examiner must establish by evidence or scientific explanation that such
physical property limitation is necessarily present in the “polyethylene” and
that it would be recognized as such by one of ordinary skill in the art, as
“[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient. (citations omitted).” In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981).
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